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.
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`Petitioner
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`v.
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`VILOX TECHNOLOGIES LLC.
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`Patent Owner
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`____________________
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`Case IPR2018-00044
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`Patent No. 7,302,423
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`____________________
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`DECLARATION OF DR. JOSEPH L. DE BELLLIS
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`Exhibit 2021 / Page 1 of 23
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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.
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`Petitioner
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`v.
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`VILOX TECHNOLOGIES LLC.
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`Patent Owner
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`____________________
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`Case IPR2018-00044
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`Patent No. 7,302,423
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`____________________
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`DECLARATION OF DR. JOSEPH L. DE BELLLIS
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`Exhibit 2021 / Page 1 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`I.
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`INTRODUCTION
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`1.
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`I make this Declaration in support of Patent Owner’s Response in the matter of
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`2.
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`3.
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`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 six 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 Hsieh-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 seven U.S. Patents, I am the
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`founder and owner of Vilox LLC, of Louisville, Kentucky. Vilox LLC manufactured
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`commercial embodiments of the patented technology claimed in the seven 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 2021 / Page 2 of 23
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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. Hseih-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,” although the
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`actual copy of the reference considered by Dr. Hseih-Yee may not have been
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`shelved until late December 1999 (60 days after October 26, 1999). See Ex 1011,
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`paragraphs 17, 20. I understand from the Declaration of Dr. Greenspun (Ex 1005)
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`that the Petitioner states the priority date of my ‘423 Patent is “as early as February
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`25, 2000.” See Ex 1005, paragraph 24. I also understand from the Petition that
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`the Petitioner alleges the Excel 2000 Bible reference is “approximately 5 months
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`prior art.” See Petition at 48. The date on which the Excel 2000 Bible was actually
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`accessible is not clear based on Petitioner’s positions, but all the dates are after I
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`conceived of the inventions disclosed and claimed in the ‘423 Patent.
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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, at least as early as January 1999. It was in January 1999 that I described
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`to my Office Manager at that time, Missy De Bellis, my vision for a database
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`management product that would be intuitive and flexible, which I came to call my
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`Exhibit 2021 / Page 3 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`“search-on-the-fly” system. My intention was to design such a system for use in
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`my medical practice.
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`10.
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`The system I described to Ms. De Bellis was one whereby a user could search
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`large amounts of data across various databases organized in various ways such
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`that the system would not only return all available results, but also would display
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`all of the results on one page. To allow the user to view all the available results, I
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`envisioned using truncation to reduce, as necessary, results to representations
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`that would trigger and take advantage of the user’s power of recognition. I further
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`described a system that would allow users to search beginning with criteria of their
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`choice but with options to filter using other criteria so that the search process would
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`be more intuitive for the user. To do this, I envisioned a database as a three-
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`dimensional body having a number of faces or panes; each face representing a
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`view into the database. I further envisioned increasing the number of panes,
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`changing, for example, a cubic form database to something like a geodesic dome;
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`the greater the number of “panes” (parses), the more granular the search
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`capability. I explained that using these concepts, we could “drill down” on data
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`across multiple databases in what I referred to as a “hyper-specific” parsing of the
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`available data. The truncation of the alpha-numeric spectrum would then allow
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`results to be reduced to a single-page view so that the extremes of the spectrum
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`could be appreciated by the user.
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`11.
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`I explained to Ms. De Bellis that by using the system and methods described
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`above, we would have much better visibility into the data for a given patient. In
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`Exhibit 2021 / Page 4 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`essence, she, as Office Manager, would be able to roll and tumble the data across
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`our multiple databases, or search on the fly. Our software then would truncate
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`search results, as necessary, so that she could view all search results on one page
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`of the terminal, which would allow her to recognize the results.
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`12. After unsuccessful attempts to modify off-the-shelf software products to implement
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`my search-on-the-fly concepts, I began efforts to design such a software tool in
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`May 1999. I initially focused development on icon manipulation, faceted search,
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`truncation, and related database tools.
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`13.
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`I continued working on developing a system that embodied my search-on-the-fly
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`concepts throughout the summer of 1999. Late May through September was the
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`busiest time of the year for my medical practice due to the large influx of people
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`into the Hamptons in the summer months. I nevertheless continued to work on
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`developing the search-on-the-fly system when I was not in surgery or seeing
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`patients. I found the progress to be slow and frustrating, in part because I had no
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`training or background as a software programmer or engineer.
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`14.
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`In August 1999, I first discussed by inventive concepts with Adriano Freire, whom
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`I had originally employed for other purposes, but who was a computer programmer
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`in his native country of Brazil. Mr. Freire subsequently became a co-inventor on
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`my U.S. Patent 7,188,100.
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`15. 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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`Exhibit 2021 / Page 5 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`computer hardware and related devices to execute the code Mr. Freire was writing.
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`Many of these purchases were made on behalf of my medical practice by my Office
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`Manager, Missy De Bellis.
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`16.
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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
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`software products.
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`17. As mentioned above, to support the development of the search-on-the-fly system,
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`I purchased computer hardware and related devices and computer software that
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`Mr. Freire used for the software development efforts. For example, I purchased
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`an Apple computer and related devices on September 27, 1999 and a jaz drive to
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`back up our work on October 5, 1999. I also purchased other computer-related
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`products and services, as can be seen in a copy of a credit card statement, which
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`shows purchases from September 27, 1999 through December 17, 1999, and in a
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`number of invoices for computer equipment (hardware and software) to allow
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`software development, testing, and operation. See Figures 1 - 12 below for these
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`purchases. Figure 4, for example, shows purchase of a Visual Basic tool for
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`software development.
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`Exhibit 2021 / Page 6 of 23
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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 2021 / Page 7 of 23
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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 2021 / Page 8 of 23
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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 2021 / Page 9 of 23
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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 2021 / Page 10 of 23
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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 2021 / Page 11 of 23
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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 2021 / Page 12 of 23
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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 2021 / Page 13 of 23
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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 2021 / Page 14 of 23
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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 2021 / Page 15 of 23
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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 2021 / Page 16 of 23
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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 2021 / Page 17 of 23
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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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`18.
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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 Angeles to be the
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`keynote speaker at an event put on by the International Campaign for Tibet to
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`honor the Dalai Lama and others. Since Eleanor Mondale and I also were going
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`Exhibit 2021 / Page 18 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`to the same event, we decided to discuss the matter in person in Los Angeles.
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`When we met, Mr. Mondale offered to arrange for a Dorsey & Whitney patent
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`attorney to contact me. Below is a picture (Figure 13) of me, Eleanor Mondale, the
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`Dalai Lama, and 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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`19. 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, 1999, 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 2021 / Page 19 of 23
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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 2021 / Page 20 of 23
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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 2021 / Page 21 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`20.
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`Throughout this time, I continued work on developing my search-on-the-fly
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`systems. We eventually built a prototype of the system. Throughout the
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`development process, I showed our progress to my Office Manager. I also
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`demonstrated the prototypes to her as they were developed.
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`21.
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`I met with two patent attorneys from Dorsey & Whitney LLP in my Southampton,
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`New York office on December 9, 1999. I specifically recall that the meeting was
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`on a Thursday because I regularly spent Wednesday in my New York City office,
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`but I canceled those office hours to prepare for the meeting. I recall that the
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`meeting was on the first Thursday in December, which was December 9.
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`22. At the December 9, 1999 meeting, I demonstrated a prototype of my search-on-
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`the-fly system that I had developed with Mr. Freire. The prototype used a database
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`that Mr. Freire had created consisting of phone book records. I had shown this
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`prototype to my Office Manager, who by that point, was also employed by Virtual
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`Logistix.
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`23. After the December 9, 1999 meeting, Mr. Freire and I copied the system we
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`demonstrated onto a CD. On December 28, 1999, we sent that CD to Dorsey &
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`Whitney. A copy of the letter, which bears my signature, forwarding the CD is
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`being concurrently submitted with my declaration as Exhibit 2026.
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`24. Dorsey & Whitney filed my first patent application, now U.S. Patent 6,760,720, on
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`February 25, 2000. Screenshots from the system I demonstrated during the
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`December 1999 were incorporated into drawings in the first application from which
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`Exhibit 2021 / Page 22 of 23
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`Case IPR2018-00044
`Patent No. 7,302,423
`Declaration of Dr. Joseph L. De Bellis
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`U.S. Patent 6,760,720 issued. One such screenshot is Fig. 10, which is
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`reproduced as Exhibit 2025 being concurrently submitted with my declaration.
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`25. 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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`26.
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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 July 8, 2018
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`Dr. Joseph L. De Bellis
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`Exhibit 2021 / Page 23 of 23
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