Paper No. _______
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`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,
`v.
`VILOX TECHNOLOGIES LLC
`Patent Owner
`________________
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`IPR2018-00044
`U.S. PATENT NO. 7,302,423
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`PETITIONER’S SUR-REPLY TO THE PATENT OWNER’S REPLY TO
`THE OPPOSITION TO THE MOTION TO AMEND
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`VILOX TECHNOLOGIES LLC
`Patent Owner
`________________
`
`IPR2018-00044
`U.S. PATENT NO. 7,302,423
`
`_______________
`
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`PETITIONER’S SUR-REPLY TO THE PATENT OWNER’S REPLY TO
`THE OPPOSITION TO THE MOTION TO AMEND
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`Patent Owner’s Reply (“PO Reply,” Paper 45) does nothing to change the fact
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`that the Motion to Amend should be denied, as explained in Petitioner’s Opposition
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`(Paper 42). Proposed claims 24–27 remain unsupported by the original specification
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`and are invalid over the prior art in any event. Moreover, Patent Owner’s attempt to
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`pre-date the Excel and Goldberg is not only deficient, but unusual as well for
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`omitting testimony or time entries from the patent attorney, emails, patent
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`application drafts, invention disclosures, and the like.
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`I. Claims 24–27 Lack Written Description Support
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`PO tries to explain that proposed claims 24 and 25 do not require that “each
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`entry, once truncated, must be displayed.” PO Reply (Paper 45) at 3. However, PO
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`cannot explain away the simple fact that “each entry” appears twice in [24.5] and
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`must refer to the same thing—the same entries and their truncated portions.
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`Therefore, if six entries are truncated, proposed claims 24 and 25 require displaying
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`a truncated portion of each of those same six entries. But PO and its expert admit
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`that the only described example displays three entries. PO cannot escape the literal
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`wording of their proposed claims.
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`II. Claims 26 and 27 Lack Written Description Support
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`PO asserts that claims 26 and 27 are supported, citing to the ’423 Patent at
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`8:44–48. PO Reply at 5. In claims 26 and 27, the “specified limit” on the number
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`of characters (from claims 3/25) must be “determined dynamically.” But the cited
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`1
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`portion of the ’423 Patent at 8:44–48 states only that “constraints may be modified,”
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`and a reading of the entire passage in context, including sentences above and below
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`the cited portion, indicates that any dynamic determining refers to a number of
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`entries, not a number of characters. ’423 Patent (EX1001), 8:31–34 (“If data
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`retrieved from database 12 exceeds the limit value, the truncated 152 adjusts a size
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`(e.g., a number of entries or records) of the data until a displayable result list is
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`achieved.”). Thus, PO fails to show the proposed claims 26 and 27 are supported.
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`III. PO Cannot Pre-Date the Prior Art
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`PO again fails to identify which claim elements were allegedly conceived or
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`reduced to practice prior to Excel or Goldberg. PO provides a claim chart in the new
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`Chu Declaration (“Chu MtA,” EX2027), but the claim chart refers to original claim
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`1 only (and not even in its entirety). Chu MtA (EX2027) at pp. 15–16. Additionally,
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`the claim chart does not bother to provide a citation for “determining a database
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`schema for a database” and fails to explain how Figure 10 supports “determining a
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`number of characters” other than by providing citations to the ’423 Patent unrelated
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`to Figure 10 and unrelated to the work described by Dr. DeBellis and Missy DeBellis
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`in their respective declarations (Exs. 2021, 2022, and 2029).
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`Furthermore, the new Missy DeBellis Declaration (EX2029) fails to provide
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`any additional explanation for the six-week gap between the October 8, 1999 Excel
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`publication date and the alleged December 9, 1999 reduction-to-practice date. The
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`new Missy DeBellis Declaration is not specific, referring to “the September-
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`November 1999 timeframe” and “[b]y November 1999.” DeBellis MtA (EX2029)
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`at ¶¶8–9. But “[t]he rule of reason does not dispense with the need for corroboration
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`of diligence that is specific as to dates and facts.” LG Electronics, Inc. v. ATI Techs.
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`ULC, IPR2015-00325, paper 62, at 39 (PTAB 2016), citing Gould v. Schawlow, 363
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`F.2d 908, 920 (CCPA 1966). The Missy DeBellis Declarations simply do not
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`provide sufficient corroboration, and PO has decided not to provide typical patent
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`evidence, such as application drafts or time entries.
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`IV. Goldberg Renders Proposed Claims 26 and 27 Obvious
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`Petitioner showed combinations including Goldberg render proposed claims
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`26 and 27 obvious. Opposition at 14–18, citing Greenspun MtA (EX1013) at ¶¶14–
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`20 and 22–30. In response, PO states, “Goldberg does not disclose how a
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`spreadsheet can be displayed on one page of a small screen and still be ‘easily
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`readable,’” and instead, “a PHOSITA would understand that because Goldberg’s
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`system is directed to making data ‘readable’ to a vehicle operator … Goldberg
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`simply would display each of the entries … on a separate screen or page.” PO Reply
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`at 9, citing Chu MtA (EX2027) at ¶¶15–22. But while Goldberg expressly teaches
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`use with database, it does not teach displaying on a separate screen or page. See
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`Goldberg (EX1014) at 4:23–26. Even Dr. Chu admits that his declaration does not
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`support PO’s assumptions:
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`Q. Now, your declaration doesn't provide support for your statement
`that Goldberg says to display each entry on a separate screen or a
`separate page, right?
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`A. No.
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`Chu Dep. II (EX1016), at 20; see also 36:5–8 (re-direct).
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`PO attempts to argue that Goldberg cannot be combined with other art to teach
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`features of the claims. Specifically, PO argues that Goldberg teaches “adding lines”
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`to a text entry to increase readability, which Patent Owner also argues is “the polar
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`opposite of reducing the number of lines to be displayed.” PO Reply at 10. PO’s
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`argument is based on its allegation that both its original claims and proposed claims
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`“are directed to compressing the vertical space required for display of multiple
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`entries.” Id. PO is wrong. PO’s own specification teaches reducing a number of
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`lines to be displayed. ’423 Patent (EX1001), 8:48–9:2. But PO’s claims are directed
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`to a completely different invention that does not require reducing a number of
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`lines—only reducing a number of characters. PO provides no valid reason against
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`the combination of Goldberg with the other art.
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`V. Dr. Chu’s Testimony is Irrelevant
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`Dr. Chu’s new declaration (EX2027) is largely irrelevant. The obviousness
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`inquiry looks at whether “the differences between the claimed invention and the
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`prior art are such that the claimed invention as a whole would have been obvious
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`4
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`before the effective filing date of the claimed invention.” 35 U.S.C. § 103(a)
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`(emphasis added). Similarly, written description support is judged at the time of
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`filing a patent application. See Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d
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`1570, 1575 (Fed. Cir. 1985). By contrast, Dr. Chu testifies regarding what “[a]
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`PHOSITA would understand” or “would know.” Chu MtA (EX2027) at ¶¶ 9, 10, 12–
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`16, 18–21, 23–24, and 27. Dr. Chu has confirmed his testimony regarding a
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`PHOSITA is directed to when proposed claims 24 and 25 were submitted—July 9,
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`2018.
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`Q. Okay. When we talk about a PHOSITA, are we referring to a
`particular time?
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`A. We would—I think we are talking about when he presented claim
`24, 25, at that time he should be able to understand and—understand
`what this claim is and whether this could be implemented in practice
`and things like that.
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`Chu Dep. II (EX1016) at 11–12. Thus, Dr. Chu’s testimony incorrectly considers a
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`present perspective, and not the time of the alleged invention. Accordingly, Dr. Chu
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`fails to address whether proposed claims 24–27 are supported or obvious under the
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`correct standards, and his testimony should be afforded little weight.
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`Dated: November 13, 2018
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`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 972-739-8635
`Facsimile: 214-200-0853
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`Respectfully submitted,
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`By: /David M. O’Dell/
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`David M. O’Dell
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`Registration No. 42,044
`Lead Counsel for Petitioner
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`Petitioner’s Sur-Reply
`IPR2018-00044 (U.S. 7,302,423)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6, this is to certify that a true and correct copy
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`of the foregoing “Petitioner’s Sur-Reply to Patent Owner’s Reply to the Opposition
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`to the Motion to Amend” service was made on the Patent Owner as detailed below:
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`Date of service November 13, 2018
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`Manner of service Email: harrop@vapatent.com
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`Documents served Petitioner’s Sur-Reply to Patent Owner’s Reply to the
`Opposition to the Motion to Amend
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`Persons Served John K. Harrop
`Cecil E. Key
`Jay Kesan
`P.O. Box 320171
`Alexandria, VA 22320
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`440 Belmont Bay Drive, Unit 202
`Woodbridge, VA 22191
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`By: /David M. O’Dell/
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`David M. O’Dell
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`Registration No. 42,044
`Lead Counsel for Petitioner
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