UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`VILOX TECHNOLOGIES LLC.
`Patent Owner
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`____________________
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`Case IPR2018-00044
`Patent No. 7,302,423
`____________________
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`DECLARATION OF DR. JOSEPH L. DE BELLLIS
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`UNIFIED PATENTS INC.
`Petitioner
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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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`DECLARATION OF DR. JOSEPH L. DE BELLLIS
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`I.
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`1.
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`2.
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`3.
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`INTRODUCTION
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`I make this Declaration in support of Patent Owner’s Preliminary Response in the
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`matter of Petition IPR2018-00044 (Petition).
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`I am not being compensated for this Declaration.
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`I am the sole inventor of U.S. Patent 7,302,423 (‘423 Patent). In addition, I am the
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`sole inventor, or one of two inventors, of four additional U.S. Patents and two
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`pending patent applications, all of which relate in some manner to the ‘423 Patent.
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`I am the owner of Vilox Technologies LLC, to which all patents and patent
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`applications are assigned.
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`4.
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`In preparing this Declaration, I reviewed the Petition; Exhibit 1011 thereto,
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`Declaration of Ingrid Hsieth-Yee, Ph.D.; Exhibit 1005 thereto, Declaration of Philip
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`Greenspun, Ph.D.; and Exhibit 1009 thereto, Excel 2000 Bible (Excel).
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`5.
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`In addition to being an inventor or co-inventor of five U.S. Patents, I am the founder
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`and owner of Vilox LLC, of Louisville, Kentucky. Vilox LLC manufactured
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`commercial embodiments of the patented technology claimed in the five U.S.
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`Patents, and sold products to private entities and government organizations.
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`6.
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`I have attended several in-person interviews at the U.S. Patent Office during
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`examination of my U.S. Patents and patent applications.
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`7.
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`I have been informed of and understand the relevant statutory basis for
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`determining the priority date for a U.S. Patent. I am familiar with the terms
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`“conception,” “diligence,” and “reduction to practice.” I am familiar with the basis
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`for establishing a prior art date for a reference, and application of prior art
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` Exhibit 2003 / Page 2 of 21
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`II.
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`8.
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`references generally in determining the validity of a U.S. Patent. I also have been
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`informed of and understand the concept of “swearing behind a reference.” Finally,
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`I understand the notions of novelty and nonobviousness when determining the
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`validity of a U.S. Patent.
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`CONCEPTION OF MY INVENTIONS
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`After reviewing the Petition and the Declaration of Dr. Hseith-Yee (Ex 1011), I
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`understand the Petitioner asserts the Excel 2000 Bible reference (Ex 1009) has a
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`“prior art date” of “between July 27, 1999 and October 26, 1999.” See Ex 1011,
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`paragraph 20. I understand from the Declaration of Dr. Greenspun (Ex 1005) that
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`the Petitioner states the priority date of my ‘423 Patent is “as early as February 25,
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`2000.” See Ex 1005, paragraph 24. I also understand from the Petition that the
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`Petitioner alleges the Excel 2000 Bible reference is “approximately 5 months prior
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`art.” See Petition at 48. In my opinion, these alleged prior art dates are
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`inconsistent.
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`9.
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`I conceived of the inventions disclosed in my U.S. Patents, including the ‘423
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`Patent, in mid-May 1999. My intention was to design a database management
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`product that would be intuitive and flexible, and that I could use in my medical
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`practice. I began efforts to design such a software tool in that month. I initially
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`focused development on icon manipulation, faceted search, truncation, and related
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`database tools.
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`10.
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`In August 1999, I first discussed by inventive concepts with Adriano Freire, whom
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`I employed for other purposes, but who was a computer programmer in his native
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` Exhibit 2003 / Page 3 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`country of Brazil. Mr. Freire subsequently became a co-inventor on my U.S. Patent
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`7,188,100.
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`11. My initial efforts with Mr. Freire were directed to writing software programs that
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`would bring my inventive concepts to life. Those efforts included Mr. Freire writing
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`computer code that would accomplish my intentions. To that end, I purchased
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`computer hardware and related devices to execute the code Mr. Freire was writing.
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`12.
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`I also was encouraged at this time to form a software company that could market
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`the software products I was developing, should they prove to be successful. On
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`October 14, 1999 I formed Virtual Logistix, Inc. to produce and market the software
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`products. To support this software development, I purchased computer hardware
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`and related devices and computer software that Mr. Freire used for the software
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`development efforts. For example, I purchased an Apple computer and related
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`devices on September 27, 1999 and a jaz drive to back up our work on October 5,
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`1999. I also purchased other computer-related products and services, as can be
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`seen in a copy of a credit card statement, which shows purchases from September
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`27, 1999 through December 17, 1999, and in a number of invoices for computer
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`equipment (hardware and software) to allow software development, testing, and
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`operation. See Figures 1 - 12 below for these purchases. Figure 4, for example,
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`shows purchase of a Visual Basic tool for software development.
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` Exhibit 2003 / Page 4 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 1.
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`Credit Card Statement
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` Exhibit 2003 / Page 5 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 2.
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`Computer Equipment Invoice, 09/27/1999
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` Exhibit 2003 / Page 6 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 3.
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`Computer Equipment Invoice, 10/05/1999
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` Exhibit 2003 / Page 7 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 4.
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`Computer Equipment Invoice, 10/09/1999
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` Exhibit 2003 / Page 8 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 5.
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`Computer Equipment Invoice, 10/13/1999
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` Exhibit 2003 / Page 9 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 6.
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`Computer Equipment Invoice, 10/15/1999
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` Exhibit 2003 / Page 10 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 7.
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`Computer Equipment Invoice, 10/20/1999
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` Exhibit 2003 / Page 11 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 8.
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`Computer Equipment Invoice, 10/05/1999
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` Exhibit 2003 / Page 12 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 9.
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`Computer Equipment Invoice, 10/18/1999
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` Exhibit 2003 / Page 13 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 10. Computer Equipment Invoice, 10/29/1999
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` Exhibit 2003 / Page 14 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 11. Computer Equipment Invoice, 10/25/1999
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` Exhibit 2003 / Page 15 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 12. Computer Equipment Invoice, 10/05/1999
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`13.
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`In September 1999, I concluded that the software programs could be marketable
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`and determined that I should seek patent protection. In early October 1999, I
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`spoke with Walter Mondale, at the time a partner at Dorsey & Whitney LLP in
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`Minneapolis, MN, and asked his advice as to how I should go about obtaining
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`patent protection. Mr. Mondale was about to travel to Los Angles to be the keynote
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`speaker at an event put on by the International Campaign for Tibet to honor the
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`Dalai Lama and others. Since Eleanor Mondale and I also were going to the same
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` Exhibit 2003 / Page 16 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`event, we decided to discuss the matter in person in Los Angles. When we met,
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`Mr. Mondale offered to arrange for a Dorsey & Whitney patent attorney to contact
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`me. Below is a picture (Figure 13) of me, Eleanor Mondale, the Dalai Lama, and
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`Walter Mondale at the October 11, 1999 event.
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`Figure 13. Honoring the Dalai Lama with Former Vice-President Walter Mondale
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`14. Mr. Mondale said he would have a Dorsey & Whitney LLP patent attorney contact
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`me to discuss obtaining patent protection. I had that telephone conversation on
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`October 28, and sent Dorsey & Whitney LLP a retainer check for $1,000 on
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`November 1. Below are (1) a copy of the retainer check (Figure 14) and (2) a copy
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` Exhibit 2003 / Page 17 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`of portions of my telephone bill (Figure 15) showing a 31-minute call to Dorsey &
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`Whitney’s Washington, D.C. office on October 28, 1999.
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`Figure 14. Retainer Check
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` Exhibit 2003 / Page 18 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`Figure 15. AT&T Phone Bill
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` Exhibit 2003 / Page 19 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`I met with two patent attorneys from Dorsey & Whitney LLP in my Southampton,
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`New York office in December 1999.
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`15.
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`16. Dorsey & Whitney filed my first patent application, now U.S. Patent 6,760,720, on
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`February 25, 2000.
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`17.
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`Subsequently, on August 24, 2000, Dorsey & Whitney filed Provisional Application
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`60/227,305, and on August 24, 2001 filed Non-provisional Application 09/935,565,
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`which claims priority to the Provisional Application and is a Continuation-in-Part of
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`09/513,340, now U.S. Patent 6,760,720.
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`18.
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`I conceived the inventions claimed in the ‘423 Patent in mid-May 1999 and worked
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`diligently to develop commercial embodiments until filing my first patent application
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`and the subsequent application that matured into the ‘423 Patent. To develop the
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`commercial embodiments, I hired a computer programmer, Adriano Freire to write
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`and test computer code. I arranged with Dorsey & Whitney LLP to prepare patent
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`applications, the first of which was filed on February 25, 2000.
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`19.
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`Petitioner has not provided a firm prior art date for Excel. Rather, Petitioner
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`provides a date range and then alleges Excel is “approximately 5 months prior art.”
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`However, Petitioner does not provide a date to which the “5 months” should be
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`applied.
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`20.
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`The earliest date (July 27, 1999) identified by Petitioner, albeit not definitive, is
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`after the date (mid-May 1999) on which I conceived the inventions of the ‘423
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`Patent. The latest date identified by Petitioner (October 26, 1999) is well after the
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`point (August-September 1999) that I had already begun actively working on
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` Exhibit 2003 / Page 20 of 21
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`developing an embodiment of those inventions, as set forth above. My date of
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`conception is, in any event, certainly more than “approximately 5 months” before
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`the February 25, 2000 filing date of my first patent application, the date on which
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`the Petitioner relies, and therefore predates the Excel reference relied on in the
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`Petition.
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`21.
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`I declare that all statements made herein based on my own knowledge are true
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`and correct to the best of my knowledge and that I made all statements with the
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`knowledge that willful false statements are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
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`Date January 25, 2018
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`/Joseph L. De Bellis /
`Dr. Joseph L. De Bellis
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` Exhibit 2003 / Page 21 of 21
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