Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`Unified Patents Inc.,
`Petitioner
`
`
`———————
`
`
`U.S. Patent No. 7,302,423
`
`_____________________
`
`
`DECLARATION OF PHILIP GREENSPUN, PH.D.,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`Unified Patents Inc. v. Vilox Technologies LLC
`Ex. 1005 / Page 1 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`Table of Contents
`Introduction ....................................................................................................... 1
`I.
`II. Qualifications and Professional Experience ................................................... 2
`III. Level of Ordinary Skill in the Art ................................................................. 7
`IV. Relevant Legal Standards .............................................................................. 8
`V. The ‘423 Patent ................................................................................................10
`A. Overview .....................................................................................................10
`B. Prosecution History of the ‘423 Patent ....................................................13
`VI. Claim Construction ......................................................................................14
`“truncation” ................................................................................................14
`A.
`B.
`“determining a database schema” ...........................................................16
`VII. Identification of How the Claims are Unpatentable .................................17
`A. Challenge 1: Claims 1–4, 7–9, and 13 are unpatentable under 35 U.S.C
`§ 103 over Maloney in view of Bertram. ............................................................17
`i. Summary of Maloney ................................................................................17
`Summary of Bertram ..............................................................................20
`ii.
`iii. Reasons to Combine Maloney and Bertram .........................................23
`iv. Claim Charts and Detailed Analysis for Ground#1 ............................26
`B. Ground#2: Claims 1–4, 7–9, and 13 are unpatentable under 35 U.S.C
`§ 103 over Excel in view of Bertram. .................................................................70
`i. Summary of Excel .....................................................................................70
`ii. Reasons to Combine Excel and Bertram ..............................................71
`iii. Claim Charts and Detailed Analysis for Ground#2 ............................73
`C. Ground#3: Claims 5 and 6 are unpatentable under 35 U.S.C § 103
`over Maloney in view of Bertram and Kanevsky. ...........................................117
`i. Summary of Kanevsky .............................................................................117
`ii. Reasons to Combine Maloney, Bertram, and Kanevsky ........................118
`iii. Analysis ..................................................................................................120
`D. Challenge 4: Claims 5 and 6 are unpatentable under 35 U.S.C § 103
`over Excel in view of Bertram, and Kanevsky .................................................130
`i. Reasons to Combine Excel, Bertram, and Kanevsky ............................130
`
`
`
`i
`
`Ex. 1005 / Page 2 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`ii. Analysis..................................................................................................132
`VIII. Conclusion ................................................................................................143
`
`
`
`
`
`ii
`
`Ex. 1005 / Page 3 of 147
`
`

`

`
`
`
`I.
`
`Introduction
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`
`1.
`
`I am making this declaration at the request of Unified Patents Inc. in
`
`the matter of the Inter Partes Review of U.S. Patent 7,302,423 (“the ‘423 Patent”)
`
`to De Bellis.
`
`2.
`
`I am a salaried employee of Fifth Chance Media LLC, which I
`
`understand is being compensated for my work in this matter. I am not an owner of
`
`Fifth Chance Media LLC and my compensation is not contingent on the outcome
`
`of this matter or the specifics of my testimony.
`
`3.
`In the preparation of this declaration, I have studied the following:
`EX1001 U.S. Patent 7,302,423 to De Bellis (“’423 Patent”)
`EX1002
`Prosecution File History of U.S. Patent 7,302,423 (“’423 PH”)
`EX1003
`Excerpts from Prosecution File History of U.S. Patent 6,760,720
`(“’720 PH”)
`Prosecution File History of U.S. Provisional Appl. 60/227,305
`EX1004
`EX1006 US Patent 5,701,453 to Maloney et al. (“Maloney”)
`EX1007 US Patent 7,168,039 to Bertram (“Bertram”)
`EX1008 US Patent 6,300,947 to Kanevsky (“Kanevsky”)
`EX1009
`John Walkenbach, Microsoft Excel 2000 Bible (IDG Books
`Worldwide, Inc. 1999). (“Excel 2000”)
`IBM Dictionary of Computing, Tenth Edition (1993) (“IBM”)
`
`EX1010
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above, and
`
`
`
`1
`
`Ex. 1005 / Page 4 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`(2) My own knowledge and experience based upon my work in the field
`
`of database management systems and database applications, as
`
`described below.
`
`II. Qualifications and Professional Experience
`
`5. My qualifications and professional experience are described in my
`
`Curriculum Vitae, a copy of which can be found in EX1012. EX1012 includes the
`
`publications I have authored in the previous 10 years, either listed directly or by
`
`reference to http://philip.greenspun.com. The following is a brief summary of my
`
`relevant qualifications and professional experience.
`
`6.
`
`In terms of my background and experiences that qualify me as an
`
`expert in this case, I earned a Ph.D. in Computer Science from Massachusetts
`
`Institute of Technology in 1999. I also obtained a Bachelor of Science Degree in
`
`Mathematics from Massachusetts Institute of Technology in 1982 and a Master of
`
`Science Degree in Electrical Engineering and Computer Science from
`
`Massachusetts Institute of Technology in 1993.
`
`7.
`
`In 1999, I received a Ph.D. in Electrical Engineering and Computer
`
`Science from the Massachusetts Institute of Technology. My thesis concerned the
`
`engineering of large online Internet communities with a Web browser front-end
`
`and a relational database management system (RDBMS) containing site content
`
`and user data.
`
`
`
`2
`
`Ex. 1005 / Page 5 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`I have authored five computer science textbooks in total,
`
`8.
`
`including Database Backed Web Sites (Macmillan), Software Engineering
`
`for Internet Applications, and a SQL language tutorial.
`
`9.
`
`I have served as an independent member of various advisory and
`
`corporate boards, mostly for technology companies. For example, I joined the
`
`corporate board of an MIT materials science spin-off in late 2005 during a
`
`$550,000 seed capital phase. I stepped down when the company secured $10
`
`million in venture capital in mid-2007.
`
`10.
`
`I have served as an expert witness for Amazon.com, Xerox, and
`
`Google in patent cases.
`
`11.
`
`I began working full-time as a computer programmer in 1978,
`
`developing a database management system for the Pioneer Venus Orbiter at the
`
`National Aeronautics and Space Administration’s Goddard Space Flight Center.
`
`12.
`
`I developed my first program using a relational database management
`
`system in 1994. It was a Web interface to the Children’s Hospital Oracle RDBMS
`
`version 6. This enabled doctors at the hospital to view patient clinical data using
`
`any computer equipped with a Web browser.
`
`13.
`
`In 1995, I led an effort by Hearst Corporation to set up an
`
`infrastructure for Internet applications across all of their newspaper, magazine,
`
`radio, and television properties. This infrastructure included software for managing
`
`
`
`3
`
`Ex. 1005 / Page 6 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`users, shopping carts, electronic commerce, advertising, and user tracking.
`
`14. Between 1995 and 1997, I significantly expanded the photo.net online
`
`community that I had started, in 1993, in order to help people teach each other to
`
`become better photographers. I began distributing the source code behind photo.net
`
`to other programmers as a free open-source toolkit, called “ArsDigita Community
`
`System”.
`
`15.
`
`In May 1997, Macmillan published my first textbook on Internet
`
`Application development, “Database Backed Web Sites”.
`
`16.
`
`In 1997, I started a company, ArsDigita, to provide support and
`
`service for the free open-source toolkit. Between 1997 and the middle of 2000, I
`
`managed the growth of ArsDigita to 80 people, almost all programmers, and $20
`
`million per year in annual revenue. This involved supervising dozens of software
`
`development projects, nearly all of which were Internet Applications with a Web
`
`front-end and an Oracle RDBMS back-end. As the founder, CEO, and chief
`
`technical employee of the company, I personally developed functional
`
`specifications, SQL data models (Structured Query Language, or “SQL”, is the
`
`standard programming language for relational database management systems), and
`
`Web page flows that determined the user experience.
`
`17. Between 2000 and the present, I have done software development
`
`projects for philip.greenspun.com and photo.net, two online services that are
`
`
`
`4
`
`Ex. 1005 / Page 7 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`implemented as relational database management Applications. In addition, I
`
`developed postclipper.com, a database-backed Web application that works in
`
`conjunction with Facebook to allow parents to produce electronic baby books.
`
`18. Separately from this commercial and public work, I have been
`
`involved, as a part-time teacher within the Department of Electrical Engineering
`
`and Computer Science, educating students at MIT in how to develop Internet
`
`Applications with an RDBMS back-end. In the Spring of 1999, I taught 6.916,
`
`Software Engineering of Innovative Web Services, with Professors Hal Abelson
`
`and Michael Dertouzos. In the Spring of 2002, this course was adopted into the
`
`standard MIT curriculum as 6.171. I wrote 15 chapters of a new textbook for this
`
`class, “Software Engineering for Internet Applications.” This book was published
`
`on the Web at http://philip.greenspun.com/seia/ starting in 2002 and 2003 and also
`
`in hardcopy from MIT Press in 2006. I am the sole author of a supplementary
`
`textbook for the class, “SQL for Web Nerds”, a succinct SQL programming
`
`language tutorial available only on the Web at http://philip.greenspun.com/sql/. I
`
`am also one of the creators and teachers of a three-day intensive course in
`
`developing database applications. We teach this class periodically at MIT.
`
`19.
`
` My personal experience with tools that provide a graphical user
`
`interface for browsing the contents of a database, regardless of schema (database
`
`structure), goes back to the mid-1990’s. These include tools for database
`
`
`
`5
`
`Ex. 1005 / Page 8 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`administrators, tools for web developers, and tools for web users.
`
`20.
`
` My personal experience with software for displaying web pages on
`
`handheld devices goes back to 1999 when supervising the development of a mobile
`
`site using the then-current WML and WAP standards.
`
`21. Within the previous four years, I have testified, either at trial or by
`
`deposition, in the following cases:
`
`• Versata v. Zoho, Case 1:13-CV-00371-SS, US District Court,
`Western District of Texas
`
`• Wonderbox Technologies, LLC v. The Management Group, Inc.
`and Iron Data Solutions, Inc., Case 14-CV-484; State of Wisconsin
`Circuit Court, Ozaukee County
`
`• HealthGrades v. MDX, Case 11-CV-00520-PAB-BNB, US District
`Court, Colorado (deposition)
`
`• Versata v. Volusion (PTAB; CBM2013-00017 and CBM2013-00018)
`(deposition)
`
`• Hoskin Hogan v. BP West Coast Products LLC and Retalix (Case No.
`BC 460880; California Superior Court, County of Los Angeles)
`(deposition)
`
`• ContentGuard Holdings, Inc. v. Amazon.com et al., (2:13-cv-01112-
`JRG, ED TX). (deposition)
`
`• Parallel Networks Licensing, LLC, v. International Business Machines
`Corporation, Case No. 13-2072 (SLR) District of Delaware) (deposition)
`
`• Old Republic General Insurance Group v. Intellectual Ventures.
`IPR2015-01706, IPR2015-01707, IPR2016-00453 (deposition)
`
`
`
`6
`
`Ex. 1005 / Page 9 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`• Intellectual Ventures v. U.S. Cellular, (Delaware) 13-cv-1636-LPS and
`1637-LPS (deposition)
`
`• British Telecommunications plc. v. Google, Inc., CA 11-1249-LPS,
`US District Court, Delaware (deposition).
`
`III. Level of Ordinary Skill in the Art
`22.
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a person of ordinary skill in the art (“POSITA”) to
`
`which the claimed subject matter pertains would have the capability of
`
`understanding the scientific and engineering principles applicable to the pertinent
`
`art. I understand that one of ordinary skill in the art has ordinary creativity, and is
`
`not an automaton.
`
`23.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`24.
`
`I am familiar with the database management art pertinent to the ‘423
`
`Patent. I am also aware of the state of the art at the time the application resulting
`
`in the ‘423 Patent was filed. I have been informed by counsel that the earliest
`
`possible priority date for the ‘423 Patent is February 25, 2000. Based on the
`
`technologies disclosed in the ‘423 Patent, and my experience in hiring software
`
`
`
`7
`
`Ex. 1005 / Page 10 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`engineers at that time, I believe that a POSITA would include someone who had,
`
`at the priority date of the ‘423 Patent, at least a bachelor’s degree in Computer
`
`Science or an equivalent field (or equivalent industry experience) and at least
`
`one year of experience designing, implementing, and using database
`
`management systems. I believe that I possessed at least such experience and
`
`knowledge at the priority date of the ‘423 patent, and that I am qualified to
`
`opine on the ‘423 Patent.
`
`25. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and
`
`the understanding of a POSITA generally (and specifically related to the
`
`references I consulted herein), reflect the knowledge that existed in the field
`
`before the earliest claimed priority date of the ‘423 Patent.
`
`IV. Relevant Legal Standards
`26.
`I have been asked to provide my opinions regarding whether claims 1-
`
`9 and 13 of the ‘423 Patent would have been obvious to a POSITA at the time of
`
`the alleged invention, in light of the prior art.
`
`27.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ‘423 Patent, I am relying on certain legal
`
`principles that counsel has explained to me.
`
`28.
`
`I have been informed and understand that a claimed invention is
`
`
`
`8
`
`Ex. 1005 / Page 11 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`unpatentable under 35 U.S.C. § 103 if the differences between the invention and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`the time the invention was made to a POSITA. I understand that the obviousness
`
`analysis takes into account factual inquiries, including the level of ordinary skill in
`
`the art, the scope and content of the prior art, and the differences between the prior
`
`art and the claimed subject matter.
`
`29.
`
`I have been informed and understand that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led a POSITA to modify the prior art reference or
`
`to combine prior art reference teachings to arrive at the claimed invention.
`
`30. Also, I have been informed and understand that obviousness does not
`
`require physical combination/bodily incorporation, but rather consideration of what
`
`
`
`9
`
`Ex. 1005 / Page 12 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`the combined teachings would have suggested to a POSITA at the time of the
`
`alleged invention.
`
`V. The ‘423 Patent
`A. Overview
`
`31. The ‘423 Patent is directed to systems and methods for providing a
`
`user interface for database access. The patent acknowledges that results of a
`
`database search may contain too many entries to fit on a computer terminal.
`
`FIG. 10 is an example of a search-on-the-fly using the search
`engine 125. In FIG. 10, a database 200 includes information related to
`a number of individuals. The information in the database 200 may be
`presented at the terminal 14 using a series of screens or menus 201-
`230. The user first accesses the database 200 and is presented with a
`list 201 of the information or data fields contained in the database
`200. The result list 201 is generated by the field assessor 162, and is
`provided for display at the terminal 14 by the query generator 150. As
`shown in FIG. 10, a user has selected the data field “City” for display
`of information. However, the number of “cities” listed in the
`database 200 is too large to conveniently display at one time (i.e., on
`one page) at the terminal 14. Accordingly, the truncator 152 will loop
`a required number of times until an adequate display is available. In
`FIG. 10, the menu 203 shows the results of the truncation with only
`the first letter of a city name displayed. (’423 Patent at 11:17–33.)
`
`32. Thus, the ’423 Patent proposes a solution to the problem of having too
`
`
`
`10
`
`Ex. 1005 / Page 13 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`many entries to display on a single page: truncating the characters of the entries
`
`that would be displayed. Figure 10 is reproduced below, showing the menu 203
`
`with the results of the truncation so that only the first letter of a city name is
`
`displayed:
`
`‘423 Patent at FIG. 4A.
`
`
`
`33. The ’423 Patent provides another example of displaying truncated city
`
`names:
`
`Many different methods of truncating for display or viewing
`may be used by truncator 152. . . . For example, instead of a full name
`of a city, some part of the name—the first n letters—is checked
`11
`
`
`
`Ex. 1005 / Page 14 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`against the database 12 again, and n is reduced until the result list is
`small enough for the capacity of the terminal 14. If the maximum
`number of displayable results is three (3), and the database 12
`contains the names of six cities “Armandia, Armonk, New Orleans,
`New York, Riverhead, Riverdale,” then the first attempt to “resolve”
`the result list will stop after a result list display is created with the full
`name of the cities:
`
`Armandia, Armonk, New Orleans . . . (the limit was reached)
`
`Try again with 7 characters:
`
`Armandia, Armonk, New Orl, New Yor, (limit reached again)
`
`Again with 5 characters:
`
`Armandia, Armonk, New O, New Y, (limit reached again)
`
`Again with 3 characters:
`
`Arm ( . . . ), New ( . . . ), Riv ( . . . ). These results may now be
`displayed on the terminal 14.
`
`The display of Arm, New, Riv can then be used to conduct a
`further search-on-the-fly.
`
`For example, a user could then select Riv for a further search-
`on-the-fly. The result list returned would then list two cities, namely
`Riverhead and Riverdale. (’423 Patent at 8:8:27–9:2.)
`
`34. The example given above truncates the characters of the entries in
`
`12
`
`
`
`
`
`
`Ex. 1005 / Page 15 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`order to consolidate a number of entries into a single, selectable item. The user can
`
`“select” the item (Riv), which is then expanded. For instance, when the user selects
`
`“Riv,” the system displays both “Riverhead” and “Riverdale.” However, the
`
`language of claims 1–9 and 13 is not limited in that way. Rather, the claim recite
`
`“determining a number of characters included in each entry” and in response either
`
`“displaying a portion of each entry” (as in claim 1) or “performing a truncation that
`
`reduces the number of characters” (as in claim 3).
`
`35. As demonstrated below, systems that determine a number of
`
`characters for tabular displayed entries and then reduce those characters were well-
`
`known prior to the ’423 Patent’s filing.
`
`B. Prosecution History of the ‘423 Patent
`
`36. The ‘423 Patent issued on November 27, 2007 from U.S. Patent
`
`Application No. 09/935,565 by. I have been informed by counsel that the earliest
`
`possible priority date of the ‘423 Patent is February 25, 2000.
`
`37.
`
`I have reviewed the prosecution history of the ‘423 Patent and it is my
`
`understanding that one of the primary references cited in this declaration, i.e.,
`
`Maloney, was considered by the United States Patent Office during prosecution.
`
`However, Maloney was not cited by the examiner to teach “determining a number
`
`of characters included in each entry” and in response either “displaying a portion
`
`of each entry” (as in claim 1) or “performing a truncation that reduces the number
`
`
`
`13
`
`Ex. 1005 / Page 16 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`of characters” (as in claim 3). This declaration demonstrates that Bertram teaches
`
`those features, and it is my understanding that the examiner did not combine any
`
`references similar to Bertram with Maloney.
`
`VI. Claim Construction
`38.
`It is my understanding that in order to properly evaluate the ‘423
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
`
`in inter partes review proceedings, generally, the broadest reasonable
`
`interpretation applies. In order to construe the following claim terms, I have
`
`reviewed the entirety of the ‘423 Patent, as well as the prosecution history.
`
`A. “truncation”
`
`39. Claims 3 and 8 use this term, reciting “performing a truncation that
`
`reduces the number of characters to be displayed from the selected data filed,”
`
`(claim 3), “repeating the truncation and comparing steps,” (claim 3), and “the
`
`truncation comprises decrementing the parameter,” (claim 8). The specification
`
`provides examples of truncation.
`
`40. For instance, with respect to Figure 10, “the menu 203 shows the list
`
`of the truncation with only the first letter of the city name displayed.” ’423 Patent,
`
`at 11:31–33. Additionally, “different methods of truncating for display or viewing
`
`may be used by truncator 152. . . . instead of a full name of a city, some part of the
`
`name—the first n letters—is checked against the database 12 again, and n is
`
`
`
`14
`
`Ex. 1005 / Page 17 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`reduced until the result list is small enough for the capacity of the terminal 14.” Id.
`
`at 8:27–52.
`
`41. Second, the file history of the’720 Patent includes a statement
`
`regarding truncation. For instance, in the office action response of March 12, 2003,
`
`the applicant attempted to distinguish claims over a reference Chakrabarti (US
`
`Patent 6,356,899). The applicant stated:
`
`Chakrabarti does not disclose truncating data. Instead, as clearly
`shown at numerous places in Chakrabarti, what is disclosed is
`reducing the number of entries related to a number of returned web
`pages based on a weighting scheme. The entries identify web pages. A
`user may set a maximum number of web pages (entries) that will be
`entered into the customized database. Any entries that exceed the set
`number are deleted, with entries having lower weighting being deleted
`first.
`
`Chakrabarti does use the term "truncate" to refer to this operation.
`However, the elimination of excess web page entries is not truncation.
`In fact, Chakrabarti's method is a common prior art method for
`reducing an amount of returned web pages. The proper, and widely
`accepted definition for truncation is “[T]o cut off the beginning or
`end of a series of characters; specifically, to eliminate one or more
`of the least significant (typically rightmost) digits.["] For the
`Examiner's benefit, page 478 of Microsoft Press Computer Dictionary,
`(third edition) containing this definition of “truncate” is attached.
`
`
`
`15
`
`Ex. 1005 / Page 18 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`(Office Action response of March 12, 2003 at 2–3, emphasis in original and
`
`added.)
`
`42. The IBM Dictionary of Computing includes a definition that is
`
`consistent with the use of “truncation” in the specification and in the file history.
`
`“The deletion or omission of a leading or of a trailing portion of a string in
`
`accordance with specified criteria.” IBM at 709.
`
`43. Therefore, it is my opinion that in light of the specification, file
`
`history, and dictionary evidence, the broadest reasonable interpretation of
`
`“truncation” includes “[t]he deletion or omission of a leading or of a trailing
`
`portion of a string in accordance with specified criteria.”
`
`B. “determining a database schema”
`
`44. This term is found in claim 1. The ’423 Patent states, “[a]ll databases
`
`require a consistent structure, termed a schema, to organize and manage the
`
`information. In a relational database, the schema is a collection of tables.
`
`Similarly, for each table, there is generally one schema to which it belongs.” ’423
`
`Patent at 1:5–54 (emphasis added). Thus, a POSITA would have understood a
`
`schema, as used in the claims and specification, includes “a collection of tables of
`
`a database.”
`
`45. The ’423 Patent specification does not use the term “determining” a
`
`database schema,” but it does provide an example of “identify[ing] a database
`
`
`
`16
`
`Ex. 1005 / Page 19 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`schema.” See id. at 6:32–42. “The search engine 125 may identify a database
`
`schema by simply using a trial and error process. Alternatively, the search engine
`
`125 may use other techniques know [sic] in the art.” Id. at 6:32–34. Accordingly, a
`
`POSITA would have understood the broadest reasonable interpretation of
`
`“determining a database schema” to include “determining a collection of tables of
`
`a database.”
`
`VII. Identification of How the Claims are Unpatentable
`
`A. Challenge 1: Claims 1–4, 7–9, and 13 are unpatentable under 35 U.S.C
`§ 103 over Maloney in view of Bertram.
`i. Summary of Maloney
`
`46. U.S. Patent 5,701,453 was filed July 1, 1993, and issued on December
`
`23, 1997 to Maloney, et al. (“Maloney”). Maloney generally describes a system
`
`and method “of retrieving data in a relational database using a graphical user
`
`interface.” Maloney at Abstract. In particular, Maloney describes “[p]airs of tables
`
`which will comprise a logical schema are selected from the relational database and
`
`the logical relationships between the pairs of tables are defined. . . . the logical
`
`relationship between the pairs of tables is stored in a relational database thereby
`
`creating a logical schema.” Maloney at 2:58–67. An end user “can use a graphical
`
`user interface (GUI) to logical schema [] to design custom forms and reports . . .
`
`[and] selects the fields or columns he wants from a dialog box (not shown) that
`
`displays all the columns that are available in [the] logical schema.” Id. at 4:64–
`
`
`
`17
`
`Ex. 1005 / Page 20 of 147
`
`

`

`
`
`5:5.
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`
`47. Example user interfaces are shown at Figs. 18–20 for the user to select
`
`fields and query the database according to the logical schema. Querying the
`
`database results and records being displayed using the interface of Figure 20.
`
`Figure 18 “depicts a sample dialog box displaying the master-detail level hierarchy
`
`of” a particular logical schema. Within the interface of Figure 18, the “the end user
`
`selects those fields 44 for which he wishes to see information,” and the selected
`
`fields are “pasted onto the form or report by the DBMS.” Id. at 17:52–57.
`
`Maloney at FIG. 18
`
`18
`
`
`
`
`
`Ex. 1005 / Page 21 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`48. With respect to Figure 19, a form is shown using the logical schema
`
`of Figure 18. With the form of Figure 19, “an end user can customize the
`
`arrangement of data returned from the database.” Id. at 17:58–60. “After the end
`
`user has created a form or report by selecting fields, records from the database
`
`can be retrieved and viewed in the form the end user created by entering a
`
`command for the DBMS to query the database based on the fields in the form.”
`
`Id. at 18:13–17.
`
`Maloney at FIG. 19
`
`
`
`49. Figure 20 “shows the sample form after records have been retrieved
`
`from the database.” Id. at 18:23–24.
`
`
`
`19
`
`Ex. 1005 / Page 22 of 147
`
`

`

`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`
`
`
`Maloney at FIG. 20
`
`ii. Summary of Bertram
`
`50. U.S. Patent 7,168,039 was filed on June 2, 1998, and issued on
`
`January 23, 2007 to Bertram (“Bertram”).
`
`51. Bertram is directed to “reducing an amount of horizontal space
`
`required when displaying a plurality of columns on a display screen.” Bertram at
`
`6:24–26. In particular, Bertram teaches a method at Figure 7 that iteratively
`
`removes characters from either a column heading or an entry of a column. Id. at
`
`7:26–33.
`
`
`
`20
`
`Ex. 1005 / Page 23 of 147
`
`

`

`
`
`
`
`
` Declaration of Philip Greenspun, Ph.D.
`Inter Partes Review of U.S. 7,302,423
`
`
`Bertram at FIG. 7
`
`
`
`52. Looking at a particular column heading or entry in a column, the
`
`method of Figure 7 works from right to left, removing one particular type of
`
`character at a time. For instance, at step 172 the method looks at a first type of
`
`character and counts the total number of characters in the column heading or
`
`column entry against a set width (step 182), removes a character of the first type if
`
`the number of characters is larger than a set width (step 188), and moves to the
`
`
`
`21
`
`Ex. 1005 / Page 24 of 147
`
`

`

` Declaration of Philip Greenspun, Ph.D.
`
`Inter Partes Review of U.S. 7,302,423
`
`
`next character (step 190) and removes the character of appropriate, looping the
`
`process from left to right. Id. at Figure 7, 6:24–37, 7:55–8:65. The method of
`
`Figure 7 then does the same thing for a second type of character (step 174) and a
`
`third type of character (step 176), and then if the width of the word is still larger
`
`than the set width, the method may perform an additional truncati