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Petition for Inter Partes Review of U.S.

Patent 7,302,423

Filed on behalf of Unified Patents Inc.


By:
David M. ODell, Reg. No. 42,044 Jonathan Stroud, Reg. No. 72,518
David L. McCombs, Reg. No. 32,271 Roshan Mansinghani, Reg. No. 62,429
Thomas Kelton, Reg. No. 54,214 jonathan@unifiedpatents.com
david.odell.ipr@haynesboone.com roshan@unifiedpatents.com
david.mccombs.ipr@haynesboone.com Unified Patents Inc.
thomas.kelton.ipr@haynesboone.com 1875 Connecticut Ave NW, Floor 10
HAYNES AND BOONE, LLP Washington, DC 20009
2323 Victory Ave. Suite 700 Telephone: (650) 999-0455
Dallas, TX 75219
Telephone: (972) 739-8635

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.,


Petitioner

vs.

VILOX TECHNOLOGIES LLC.


Patent Owner

IPR2017-XXXXX
U.S. Patent 7,302,423

PETITION FOR INTER PARTES REVIEW OF


U.S. PATENT 7,302,423

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Petition for Inter Partes Review of U.S. Patent 7,302,423

TABLE OF CONTENTS

I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8 ....................................1

A. Real Party-in-Interest.................................................................................1

B. Related Matters ..........................................................................................1

C. Lead and Back-up Counsel and Service Information ...............................2

II. CERTIFICATION OF GROUNDS FOR STANDING ....................................3

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ......................3

A. Prior Art Patents and Printed Publications ................................................3

B. Statutory Grounds for Challenges .............................................................4

IV. U.S. Patent 7,302,423 ........................................................................................5

A. Summary....................................................................................................5

B. Level of Ordinary Skill in the Art .............................................................6

C. Prosecution History and Discretion Under 35 U.S.C. 325(d) ...............7

V. CLAIM CONSTRUCTION.............................................................................12

A. truncation .............................................................................................13

B. determining a database schema............................................................13

VI. CLAIMS 1-9 and 13 ARE UNPATENTABLE ..............................................14

A. Challenge 1: Claims 14, 79, and 13 are unpatentable under 35


U.S.C 103 over Maloney in view of Bertram ......................................14

1. Overview of Maloney ......................................................................14

2. Overview of Bertram ......................................................................15

3. Reasons to Combine Maloney and Bertram ...................................16

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Petition for Inter Partes Review of U.S. Patent 7,302,423

4. Analysis ...........................................................................................17

B. Challenge 2: Claims 14, 79, and 13 are unpatentable under 35


U.S.C 103 over Excel in view of Bertram............................................45

1. Overview of Excel ...........................................................................45

2. Reasons to Combine Excel and Bertram.........................................46

3. Challenges 1 and 2 are not Substantially the Same ........................48

4. Analysis ...........................................................................................48

C. Challenge 3: Claims 5 and 6 are unpatentable under 35 U.S.C 103


over Maloney in view of Bertram, and Kanevsky ...................................78

1. Overview of Kanevsky ....................................................................78

2. Reasons to Combine Maloney, Bertram, and Kanevsky .................79

3. Analysis ...........................................................................................81

D. Challenge 4: Claims 5 and 6 are unpatentable under 35 U.S.C 103


over Excel in view of Bertram, and Kanevsky ........................................82

1. Reasons to Combine Excel, Bertram, and Kanevsky ......................82

2. Analysis ...........................................................................................84

VII. CONCLUSION................................................................................................86

VIII. CERTIFICATE OF WORD COUNT..............................................................87

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Petition for Inter Partes Review of U.S. Patent 7,302,423

PETITIONERS EXHIBIT LIST

October 6, 2017

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)
EX1004 Prosecution File History of U.S. Provisional Appl. 60/227,305
EX1005 Declaration of Dr. Philip Greenspun Under 37 C.F.R. 1.68
(Greenspun)
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)
EX1010 IBM Dictionary of Computing, Tenth Edition (1993) (IBM)
EX1011 Declaration of Ingrid Hsieh-Yee
EX1012 Curriculum Vitae of Dr. Philip Greenspun

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Petition for Inter Partes Review of U.S. Patent 7,302,423

I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8

A. Real Party-in-Interest

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

Petitioner) certifies that Unified is the real party-in-interest, and further certifies

that no other party exercised control or could exercise control over Unifieds

participation in this proceeding, the filing of this petition, or the conduct of any

ensuing trial.

B. Related Matters

According to assignment records, US Patent 7,302,423 the 423 Patent

(EX1001) is owned by Vilox Technologies LLC of Plano, TX (Vilox or Patent

Owner).

As of the filing date of this Petition, and to the best knowledge of Petitioner,

the 423 Patent is or has been involved in these matters:

Name Number District


Smart Search Concepts LLC v. Buy.Com Inc. 1-13-cv-01034 DED
Smart Search Concepts LLC v. Wal-Mart 1-13-cv-01042 DED
Stores Inc. et al
Smart Search Concepts LLC v. Neiman Marcus 1-13-cv-01039 DED
Inc. et al
Vilox Technologies LLC v. The Priceline 2-15-cv-01460 TXED
Group, Inc. et al
Vilox Technologies LLC v. Orbitz Worldwide, 2-15-cv-01459 TXED
Inc. et al
Vilox Technologies LLC v. Expedia, Inc. et al 2-15-cv-01457 TXED
Vilox Technologies LLC v. Express, Inc. et al 2-15-cv-02025 TXED
Vilox Technologies LLC v. Costco Wholesale 2-15-cv-02019 TXED
Corporation

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Vilox Technologies LLC v. Mindgeek USA, 2-16-cv-01278 TXED


Inc.

C. Lead and Back-up Counsel and Service Information

Lead Counsel
David M. ODell Phone: 972-739-8635
HAYNES AND BOONE, LLP Fax: 214-200-0853
2323 Victory Ave. Suite 700 david.odell.ipr@haynesboone.com
Dallas, TX 75219 USPTO Reg. No. 42,044

Back-up Counsel
Jonathan Stroud Phone: 650-999-0455
Unified Patents Inc.
1875 Connecticut Ave NW, Floor 10 jonathan@unifiedpatents.com
Washington, DC 20009 USPTO Reg. No. 72,518

David L. McCombs Phone: 214-651-5533


HAYNES AND BOONE, LLP
2323 Victory Ave. Suite 700 david.mccombs.ipr@haynesboone.com
Dallas, TX 75219 USPTO Reg. No. 32,271

Thomas Kelton Phone: 972-739-8635


HAYNES AND BOONE, LLP
2323 Victory Ave. Suite 700 thomas.kelton.ipr@haynesboone.com
Dallas, TX 75219 USPTO Reg. No. 54,214

Roshan Mansinghani Phone: 214-945-0200


Unified Patents Inc.
1875 Connecticut Ave NW, Floor 10 roshan.@unifiedpatents.com
Washington, DC 20009 USPTO Reg. No. 62,429

Please address all correspondence to lead and back-up counsel. Petitioner

consents to electronic service.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

II. CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which

review is sought is available for IPR and that Petitioner is not barred or estopped

from requesting IPR review challenging the patent claims on the grounds identified

in this Petition.

III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges

claims 19 and 13 of the 423 Patent.

A. Prior Art Patents and Printed Publications

The following references are pertinent to the grounds of unpatentability

explained below:

1. US 5,701,453 (issued December 23, 1997) (Maloney (EX1006)),

prior art under at least 35 U.S.C. 102(b).1

2. US 7,168,039 (filed June 2, 1998; issued January 23, 2007)

(Bertram (EX1007)), prior art under at least 35 U.S.C. 102(e).

3. US 6,300,947 (filed July 6, 1998; issued October 9, 2001)

(Kanevsky (EX1008)), prior art under at least 35 U.S.C. 102(e).

4. John Walkenbach, Microsoft Excel 2000 Bible (IDG Books

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The 423 Patent issued from an application filed prior to the enactment of the

America Invents Act (AIA). Thus, the pre-AIA statutory framework applies.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Worldwide, Inc. 1999) Excel (EX1009), which is prior art under at

least 35 U.S.C. 102(a). See EX1011, 2026 (showing public

availability as early as July 27, 1999 and no later than December,

1999); see also 128.

Citations to EX1001 and EX1006EX1008 are to original page/column and

line numbering. Citations to EX1002EX1004, EX1009, EX1010, and EX1012

are to page numbers added in compliance with 37 C.F.R. 42.24(d).

B. Statutory Grounds for Challenges

This Petition, supported by the declaration of Dr. Philip Greenspun

Greenspun (EX1005), requests cancellation of claims 19 and 13 under the

Challenges listed below:

Challenge #1: Claims 14, 79, and 13 are unpatentable under 35 U.S.C

103 over Maloney and Bertram.

Challenge #2: Claims 14, 79, and 13 are unpatentable under 35 U.S.C

103 over Excel and Bertram.

Challenge #3: Claims 5 and 6 are unpatentable under 35 U.S.C 103 over

Maloney in view of Bertram, and Kanevsky.

Challenge #4: Claims 5 and 6 are unpatentable under 35 U.S.C 103 over

Excel in view of Bertram, and Kanevsky.

Challenges #1, 3 are not cumulative of Challenges #2, 4. Infra VI.B.3.

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IV. U.S. PATENT 7,302,423

A. Summary

The 423 Patent is directed to systems 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. The 423 Patent (EX1001), at 11:17

33. The 423 Patent purports to solve this issue by truncating the characters of the

entries that would be displayed. An example of displaying truncated city names is

provided below.

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 namethe first n lettersis checked 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:

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Petition for Inter Partes Review of U.S. Patent 7,302,423

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.
Id. at 8:8:279:2; see also Fig. 10.
The example given above truncates the characters of the entries in order to

consolidate a number of entries into a single selectable item that can be expanded

by user selection. For instance, truncating a number of characters may result in

Riv, which can be expanded by the user to display both Riverhead and

Riverdale. However, the language of claims 19 and 13 is not so limited, instead

merely 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). As

demonstrated below, however, systems that determine a number of characters for

tabular displayed entries and then reduce those characters were well-known prior

to the 423 Patents filing. Greenspun 3135 (EX1005).

B. Level of Ordinary Skill in the Art

A person of ordinary skill in the art at and before the priority date for the

423 Patent (POSITA) would have at least a bachelors degree in Computer

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Science or an equivalent field (or equivalent industry experience) and at least one

year of experience designing, implementing, and using database management

systems. Greenspun 2225 (EX1005), see also 521.

C. Prosecution History and Discretion Under 35 U.S.C. 325(d)

The Prosecution History

The 423 Patent issued from U.S. Patent Appl. 09/935,565 (565

Application), which was filed August 24, 2001. There are multiple continuations

and continuations-in-part in the family of the 423 Patent, and the direct lineage of

the 423 Patent stretches to U.S. Provisional Application 60/227,305 (305

Provisional).

The first Office Action (OA) was mailed on August 24, 2004. The Examiner

used Maloney as a primary reference against claims 1-3, 14, 2021, and 41. 423

PH (EX1002), at 147156. The Examiner acknowledged that Maloney does not

teach a step wherein if the quantity exceed a specified amount; truncating data,

and displaying the truncated data; and if the quantity does not exceed the specified

amount, displaying contents of the database field. Id. at 148. The Examiner

instead relied on US 6,321,228 to Crandall (Crandall) to teach this feature. Id.

In response, the Applicant amended claim 1 in order to focus on determining a

number of characters included in each entry, rather than determining a quantity

of entries, and then displaying only a portion of each entry if the number of

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Petition for Inter Partes Review of U.S. Patent 7,302,423

characters included in each entry exceeds a specified amount of characters. Id. at

9698.

The response to the OA did not include substantive arguments, but rather

referred to an interview with the examiner; the Examiners Interview Summary did

not include much substance, either. Id. at 104105, 8991. The cited portions of

Crandall at 6:1315 and 8:2527 refer to a web search feature providing [r]esult

set 510 [that] is typically truncated at a predetermined number to limit the number

of records that are transmitted to the user. In other words, Crandall limits a

number of records that are returned to the user and does not determine a number

of characters or reduce a number of characters displayed for each entry.

Next, the Examiner issued a Final OA on June 1, 2007, allowing claims 1

and 2, and indicating allowability of dependent claim 8. Id. at 63, 74. However, the

Final Office Action combined Maloney with US 6,593,949 to Chew (Chew) and

relied on Chew as teaching, wherein if the quantity exceeds a specified limit,

reducing a number of characters to be displayed for each entry from the selected

data field and displaying the reduced number of characters for each entry from of

[sic] the database field. Id. at 6667.

The cited portions of Chew at 5:3041, 6:6266, and 3:6064 disclose a

contact list arranged in rows and columns, wherein a rightmost column may

display the letter w indicating that the phone number shown is for work. When a

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Petition for Inter Partes Review of U.S. Patent 7,302,423

user taps the letter w, additional information such as further telephone numbers for

that contact are displayed, as in Chews Figure 5. In other words, Chew uses an

abbreviation, such as the letter w, as an expandable item rather than reducing a

number of characters to be displayed in an entry. Furthermore, Chew does not

appear to teach determining a number of characters and then reducing a number of

characters in response thereto.

The Applicant then amended claim 3 to rewrite dependent claim 8 in

independent form to gain allowance. Id. at 5152.2

However, the combination of Maloney and Bertram and the combination of

Excel and Bertram render obvious determining a number of characters included in

each entry and then displaying a portion of each entry to have a fewer number of

characters (or truncating). As demonstrated below, this prior art renders obvious

the other limitations of claims 19 and 13 as well.

The Board Should Institute Grounds Including Maloney

The grounds of unpatentability including Maloney deserve institution

because they combine Maloney with Bertram in a way that was not considered by

the USPTO Examiner.

2
Combinations including Maloney in view of Crandall were also cited against the

claims of the parent application, which issued as US 6,760,720. 720 PH

(EX1003), at 196204.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Maloney was used as a primary reference in the prosecution. The issue is

whether the Maloney grounds, as presented herein, fall under 35 U.S.C. 325(d)

and thus are subject to the Boards discretion to deny institution. In Juniper

Networks, Inc. v. Mobile Telecommunications Techs., LLC, IPR2017-00642 (Paper

24), the Board addressed its discretion to deny institution where the same or

substantially the same prior art or arguments were previously presented to the

Office (e.g. during prosecution of the patent). Drawing from a collection of other

institution decisions, the Board provided a list of factors to consider, each

discussed below. See Juniper Networks, 89. The facts as applied using the Juniper

Networks factors weigh in favor of institution:

1) The similarity of the asserted art in the prior art involved during

examination. Maloney was used as a primary reference during prosecution, but the

present ground of unpatentability combines Maloney with Bertram (US

7,168,039). Unlike Crandall and Chew, Bertram explicitly discloses in its Figure 7

and associated description determining a number of characters in entries of data

fields and then reducing the characters to conform to a set width. Figure 7 and its

associated description in Bertram walks the reader through a process that

iteratively reduces characters one-by-one starting from the rightmost side, and after

a given character is removed, the process determines again the number of

characters and compares them to the set width and removes the next character if

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Petition for Inter Partes Review of U.S. Patent 7,302,423

appropriate. Bertram (EX1007), at 7:558:65. Bertram applies this process to

either column headings or entries in columns, as shown in its Figure 8. Id. at 8:66

9:8, see also 7:3032. Bertram directly addresses the limitations the examiner

perceived were missing, and operates differently than do either Crandall or Chew,

and thus the combination of Maloney and Bertram is different than anything that

was before the Examiner during prosecution.

2) The extent to which the asserted art was considered during

examination, including whether the prior art was the basis for rejection.

Maloney was considered and discussed during prosecution of the 423 Patent.

Bertram, however, was not.

3) The cumulative nature of the asserted art and the prior art

considered during examination. As noted above, Bertram is not cumulative of

either Crandall or Chew.

4) Whether Petitioner has pointed out sufficiently how the Examiner

erred in its consideration of the asserted prior art. The Examiner did not have

Bertram before him during examination. Furthermore, the present Petition does not

use Maloney in any way inconsistent with any issues decided during examination.

5) The extent of the overlap between the arguments made during

examination and the manner in which Petitioner relies on the prior art or the

applicants arguments during examination. Bertram discloses a much different

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Petition for Inter Partes Review of U.S. Patent 7,302,423

technology than does either Crandall or Chew. Due to these differences, none of

the arguments made during examination regarding either Crandall or Chew applies

to Bertram. Therefore, there is no overlap.

6) The extent to which additional evidence and facts presented in the

Petition warrant reconsideration of the prior art. Bertram is highly relevant

evidence of unpatentability of the claims. The combinations of Maloney and

Bertram are different than those combinations using either Crandall or Chew and

thus warrant reconsideration.

The Board Should Institute Grounds Including Excel

The grounds of unpatentability including Excel deserve institution because

neither Excel nor Bertram were cited or considered by the USPTO Examiner. In

addition, neither reference is similar to, nor cumulative of, the art cited during

examination. Petitioner discusses Bertram above and shows infra at VI.B.3 that

Excel is not cumulative of Maloney. Further, the operation of Maloney with respect

to schemas is different than that of Excel, as discussed in the analysis section

below for Grounds 1 and 2.

V. CLAIM CONSTRUCTION

Here, the claim language is given its broadest reasonable construction in

light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b);

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Terms not

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Petition for Inter Partes Review of U.S. Patent 7,302,423

specifically construed below have their plain and ordinary meaning under the

broadest reasonable interpretation. See id.

A. truncation

The 423 Patent does not define this term, but it does provide an example at

8:8:279:2. Such example is consistent with the IBM Dictionary of Computing:

The deletion or omission of a leading or of a trailing portion of a string in

accordance with specified criteria. IBM (EX1010), at 3. This is what a POSITA

would have understood to be the broadest reasonable interpretation. Greenspun

3943 (EX1005); see also (EX1003) at 174.

B. determining a database schema

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 (EX1001), at 1:554. Thus, a POSITA

would have understood a schema, as used in the claims and specification, is a

collection of tables of a database. The 423 Patent specification does not use the

term determining a database schema, but it does provide an example of

identify[ing] a database schema. See id. at 6:3242. 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.

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Greenspun 4445 (EX1005).

VI. CLAIMS 1-9 AND 13 ARE UNPATENTABLE 3

A. Challenge 1: Claims 14, 79, and 13 are unpatentable under 35


U.S.C 103 over Maloney in view of Bertram

1. Overview of Maloney

Maloney describes a system and method of retrieving data in a relational

database using a graphical user interface. Maloney (EX1006), 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 (EX1006), at 2:5867. An end user can use a graphical user interface

(GUI) to logical schema [] to design custom forms and reports ... [and the user]

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. Maloney (EX1006), at

4:645:5. Example user interfaces are shown at Figs. 1820. Maloney is of record

in the 423 Patent, as explained supra at IVI.C. See also Greenspun,4649

3
Unless otherwise specified, all bold italics emphasis below has been added. Text

in italics is used to signify claim language, while reference names are also

italicized.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

(EX1005).

2. Overview of Bertram

Bertram is directed to reducing an amount of horizontal space required

when displaying a plurality of columns on a display screen. Bertram (EX1007), at

6:2426. Bertram teaches a method at Figure 7 that iteratively removes characters

from either a column heading or an entry of a column. Id. at 7:2633. Looking at a

particular entry, the method of Figure 7 works from right to left, counting a

number of characters against a set width, removing a character if the number of

characters is larger than a set width, and repeating the process until the entry is

smaller than or equal to the set width. Id. at Figure 7, 6:2437, 7:558:65. In the

example of Figure 8, the method removes lower-case letters in the column

headings one at a time, counting the letters against the set width and removing

those letters, until a given column heading is smaller than or equal to the set width.

Id. at 7:558:65, Figure 7 steps 176192. Bertram does not teach away from

truncation, instead teaching truncation in addition to removing characters that may

appear in a middle of a string, such as spaces and vowels. Id. at 7:1324, 7:5564,

Figure 7 step 196. Bertram counts among its advantages, efficient use of space,

preserving certain information, and the ability to adapt to new monitors or

columns. Id. at 4:24, 7:1425. Greenspun,5054 (EX1005).

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3. Reasons to Combine Maloney and Bertram

A POSITA would have been motivated to combine Maloney and Bertram

for several reasons. First, Maloney and Bertram are analogous prior art and in the

same field of endeavor. Both Maloney and Bertram disclose displaying data in a

tabular format and, more specifically, in columns. Maloney (EX1006), at Figures

1820; Bertram (EX1007), at Abstract; Greenspun, 55 (EX1005).

Second, Bertram provides an express motivation to use its techniques in the

system of Maloney. Bertram teaches that its technique is used for displaying a

plurality of columns on a display screen and teaches that its technique can

display information in a format more easily viewed by a user. Bertram (EX1007),

at 2:5860, 3:46. Bertram also describes that the technique is generally applicable

to entries containing text data, such as those of Maloneys Figure 20. Bertram

(EX1007), at 7:2532. Maloney teaches displaying a multitude of entries in the

form of Figure 20, which uses a tabular format to show the entries in columns. A

POSITA would have understood that data entries may exceed a column width in

Maloney. Thus, a POSITA would have been motivated to apply Bertrams

technique to the displays of Maloney (e.g., headings and entries of the columns in

scrolling table 52 of Figure 20) to ensure that the columns of data can fit within a

display window and would be readable to a user, would use space efficiently,

would preserve information, and would adapt to new columns, as suggested by

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Bertram. Greenspun,5658 (EX1005).

In addition, combining the teachings of Maloney and Bertram would

produce predictable, operable results. Applying Bertrams technique to the

interface of Maloney is a use of a known technique (reducing a number of

characters in column data) to improve a similar method (a graphical user interface

displaying data in columns) in the same way. Implementing Bertrams technique to

the interface of Maloney is also an application of a known technique (reducing a

number of characters in column data) to a known method (a graphical user

interface displaying data in columns) ready for improvement to yield predictable

results by achieving the benefits of Bertram. Maloneys operation would

essentially be unchanged, except for implementing Bertrams abbreviation

technique, which demonstrates that a POSITA would have had a reasonable

expectation of success. Greenspun, 5961 (EX1005).

4. Analysis

Claim 1

[1.1] 1. A computer-implemented method for displaying data comprising:


Maloney teaches this feature by disclosing a computer-implemented

method for providing a hierarchical view of data stored in a plurality of relational

database tables, which discloses this limitation. Maloney (EX1006), at 20:46,

see also 4:520; Greenspun, pp.2930 (EX1005).

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Petition for Inter Partes Review of U.S. Patent 7,302,423

[1.2] determining a database schema for a database;


Maloney teaches [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.... [o]nce a join operator is selected for each join field, the

logical relationship between the pairs of tables is stored in a relational database

thereby creating a logical schema, which discloses this limitation. Maloney

(EX1006), 2:5867. Maloneys disclosure of selecting tables and establishing a

logical relationship to create the logical schemas teaches determining a collection

of tables of the database, as construed above at V.B, i.e., determining a database

schema for a database. Maloney (EX1006), at 2:5867, see also 17:1318.

Maloney also teaches providing a list of available tables to a user, which

additionally teaches this feature. Id. (EX1006) at 8:4348; Greenspun pp.3031

(EX1005).

[1.3] providing a list of database fields, wherein the list includes a descriptor
indicating a data category;
Maloney teaches: (1) providing a list of database fields; and (2) the list

includes a descriptor indicating a data category, by disclosing the dialog boxes of

Figures 1820, where each of the fields 44, 46, 48, 50 is listed and has a name,

e.g., storeid with a text 49 descriptor indicating a data category, e.g., Store

number. The selected master level data fields 46 selected by the end user from

the Customer level 129 of FIG. 18, namely, lname, fname, phone, storenm, and

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Petition for Inter Partes Review of U.S. Patent 7,302,423

storeid, are pasted individually into the top portion of the form window as

individual data fields 48. Each data field is preceded by text 49 describing the field

created by the end user when designing the form. Maloney (EX1006), at 17:58

18:12, see also 7:4345, 17:1821, 17:2227; Greenspun pp.3135 (EX1005).

Lists of database fields Descriptor indicating


data categories

Descriptors indicating
data categories
Lists of database fields

Maloney at FIG. 20 (EX1006), annotated


[1.4] receiving a search selection for a database field on the provided list of
database fields;
Maloney teaches this feature by receiving field selections and then querying

(searching) the database based on fields in the form of Figures 19 and 20. After

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Petition for Inter Partes Review of U.S. Patent 7,302,423

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.

The DBMS determines from the logical schema tables 42 of FIGS. 4A and 510,

the physical tables and columns on which to perform the query. Maloney

(EX1006), at 18:1222; Greenspun pp.3536 (EX1005).

[1.5] determining a number of characters included in each entry in the selected


database field; and
Maloney and Bertram render this feature obvious. For instance, as noted at

[1.4], Maloney teaches a search selection for database fields by selecting the fields

in the form of Figures 19 and 20. Also, Maloney at Figure 20 teaches that querying

the selected fields brings up retrieved records (entries in selected database fields).

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Selected database field


List of entries from selecting
database field

Maloney at FIG. 20 (EX1006), annotated


Maloney further teaches:

FIG. 20 shows the sample form after records have been retrieved
from the database... The related master and detail level records
returned from the query are combined on the user's screen in the form
to produce a composite record called a logical schema record 54....
When the end user issues a command to retrieve information
regarding the customers other sales, new records retrieved from the
database scrolling tables 52 replace the current records in the detail.
Maloney (EX1006), at 18:2343. Examples of queried and selected fields includes:

Item name, Part number, Price, and Quantity.

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In addition, Bertram teaches determining a number of characters included in

each column heading (entry) for all the columns in a viewed table by comparing a

given entry to a set width.

Determining a number of
characters in each entry

Bertram at FIG. 7 (EX1007), annotated


Bertram discusses the method Figure 7, and in particular steps 180, 182:

The last character for the column heading is retrieved via step 18C [sic]. It is then

determined if the width of the column heading is greater than the width set in

step 52 of the method 50, via step 182. Bertram (EX1007), at 8:2229; see also

6:3854, 7:2532, 8:5865. Thus, Maloneys display of entries for a selected

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Petition for Inter Partes Review of U.S. Patent 7,302,423

database field in view of Bertrams technique of determining a number of

characters in column entries renders obvious determining a number of characters

included in each entry in the selected database field. A POSITA would have

incorporated Bertrams teaching into Maloney to shorten text in columns of

Maloneys Figures 1920 while preserving readability and as described above in

VI.A.3. Greenspun pp.3641 (EX1005). Additional reasons to combine these

references are provided above at VI.A.3.

[1.6] if the number of characters included in each entry exceeds a specified


amount of characters, displaying a portion of each entry in the selected database
field, wherein a number of characters displayed in each portion is less than or
equal to the specified amount of characters; and
Maloney in view of Bertram renders this feature obvious. As discussed

supra [1.5], Bertram and Maloney render obvious determining a number of

characters included in each entry. Additionally, Bertram teaches if the number of

characters included in each column heading (entry) exceeds a set width (exceeds

a specified amount of characters), removing characters and displaying an

abbreviated entry for each column heading (displaying a portion of each entry in

the selected database field). The number of characters in an abbreviated entry (a

displayed portion of each entry) is equal to or less than the set width (a specified

amount of characters).

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Displayed
portion is
less than
specified
amount

Compare each entry to a


specified amount of
characters.

Bertram at FIG. 7 (EX1007), annotated


The last character for the column heading is retrieved via step 18C. It
is then determined if the width of the column heading is greater
than the width set in step 52 of the method 50, via step 182.... If the
width is greater than the set width, then via step 186 it is determined
if the character is the same type as set in steps 172, 174, or 176.... If
the character matches the current character type in step 186, then the
character is removed in step 188 ... Thus, each character in the
column heading is tested to see if it matches the current character
type and removed if a match is found.
Bertram (EX1007), at 8:2257, see also 8:5865. Thus, Maloneys display of

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Petition for Inter Partes Review of U.S. Patent 7,302,423

entries for a selected database field in view of Bertrams technique of determining

a number of characters in column entries and then reducing a number of characters

in those column entries if the entries exceed a set width renders obvious if the

number of characters included in each entry exceeds a specified amount of

characters, displaying a portion of each entry in the selected database field,

wherein a number of characters displayed in each portion is less than or equal to

the specified amount of characters. Greenspun pp.4144 (EX1005) see also supra

[1.5] and VI.A.3 (motivations to combine).

[1.7] if the number of characters included in each entry does not exceed the
specified amount, displaying each entry in its entirety.
Maloney in view of Bertram renders this feature obvious. As discussed

supra [1.5], Bertram and Maloney render obvious determining a number of

characters included in each entry. Additionally, Bertram teaches that if the number

of characters in a column heading (entry) does not exceed the set width (specified

amount), displaying the column heading in its entirety. The last character for the

column heading is retrieved via step 18C [sic]. It is then determined if the width

of the column heading is greater than the width set in step 52 of the method 50,

via step 182. If the width is not greater than the width set, the abbreviation is

terminated via step 184. Bertram (EX1007), at 8:2229; see also 8:5865.

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Displaying a
column
header in its
entirety if
NO at 182
or 194

Compare each entry to


a specified amount of
characters.

Bertram at FIG. 7 (EX1007), annotated


Thus, Maloneys display of entries for a selected database field in view of

Bertrams technique of determining a number of characters in column entries and

then not reducing a number of characters in those column entries teaches if the

entries do not exceed a specified width teaches if the number of characters

included in each entry does not exceed the specified amount, displaying each entry

in its entirety. Greenspun pp.4446 (EX1005) see also supra [1.5] and VI.A.3

(motivations to combine).

Accordingly, claim 1 is unpatentable over the combination of Maloney and

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Bertram.

Claim 2

[2.1] The method of claim 1, further comprising providing a key word search.
Maloney teaches this feature. For instance, Maloney accesses database

information using keywords: The present invention allows end users to access

database information through an intuitive point and click graphical interface

with knowledge of SQL commands, keywords, or syntax being required. Maloney

(EX1006), at 17:58. Thus, Maloneys point and click graphical user interface

allowing access to a database using keywords teaches providing a key word

search. Greenspun pp.4647 (EX1005). Thus, claim 2 is unpatentable over the

combination of Maloney and Bertram.

Claim 3

[3.1] A computer-implemented method for formatting data for display,


comprising:
Maloney teaches this feature by disclosing a computer-implemented

method for providing a hierarchical view of data stored in a plurality of relational

database tables. Maloney (EX1006), at 20:46, see also 4:520; Greenspun

pp.4748 (EX1005).

[3.2] generating a list of data fields;


Maloney teaches generating a list of data fields by disclosing the dialog

boxes of Figures 1820, where each of the fields 44, 46, 48, 50 is listed and has a

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Petition for Inter Partes Review of U.S. Patent 7,302,423

name, e.g., itemnm. The selected master level data fields 46 selected by the end

user from the Customer level 129 of FIG. 18, namely, lname, fname, phone,

storenm, and storeid, are pasted individually into the top portion of the form

window as individual data fields 48. Each data field is preceded by text 49

describing the field created by the end user when designing the form. Maloney

(EX1006), at 17:5818:12, see also Figure 18, 17:1827, 7:4345; Greenspun

pp.4852 (EX1005).

List of data fields

Lists of data fields

Maloney at FIG. 20 (EX1006), annotated

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Petition for Inter Partes Review of U.S. Patent 7,302,423

[3.3] receiving a first data field selection from the list of data fields;
Maloney teaches this feature by receiving data field selections and then

querying the database based on data fields in the form of Figure 19 and 20. 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.

Maloney (EX1006), at 18:1222; Greenspun p.52 (EX1005).

[3.4] determining a first quantity indicative of a number of characters in each


entry of the selected data field;
Maloney and Bertram render this feature obvious. As noted at [3.3],

Maloney teaches a data field selection by selecting the fields in the form of Figures

19 and 20. Also, Maloney at Figure 20 teaches that querying the selected fields

brings up retrieved records (entries in selected data fields).

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Selected data field


List of entries from selecting
data field

Maloney at FIG. 20 (EX1006), annotated


FIG. 20 shows the sample form after records have been retrieved
from the database... The related master and detail level records
returned from the query are combined on the user's screen in the form
to produce a composite record called a logical schema record 54....
When the end user issues a command to retrieve information
regarding the customers other sales, new records retrieved from the
database scrolling tables 52 replace the current records.
Maloney (EX1006), at 18:2343. Examples of queried and selected fields includes

Item name, Part number, Price, and Quantity.

In addition, Bertram teaches determining a number of characters included in

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Petition for Inter Partes Review of U.S. Patent 7,302,423

each column heading (entry) for all the columns in a viewed table by comparing a

given entry to a set width.

Determining a number of
characters in each entry

Bertram at FIG. 7 (EX1007), annotated


Bertram discusses the method Figure 7, and in particular steps 180, 182:

The last character for the column heading is retrieved via step 18C [sic]. It is then

determined if the width of the column heading is greater than the width set in

step 52 of the method 50, via step 182. Bertram (EX1007), at 8:2229; see also

6:3854, 7:2532, 8:5865. Thus, Maloneys display of entries for a selected data

field in view of Bertrams technique of determining a number of characters in

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Petition for Inter Partes Review of U.S. Patent 7,302,423

column entries renders obvious determining a first quantity indicative of a number

of characters in each entry of the selected data field. A POSITA would have

incorporated Bertrams teaching into Maloney to shorten text in columns of

Maloneys Figures 1920 while preserving readability and as described above in

VI.A.3. Greenspun pp.5257 (EX1005).

[3.5.1] if the first quantity exceeds a specified limit, reducing a number of


characters to be displayed for each entry from the selected data field,
comprising:
As discussed supra [3.4], Bertram and Maloney render obvious determining

a first quantity indicative of a number of characters. Additionally, Bertram teaches

if the number of characters included in each column heading (entry) exceeds a set

width (a specified limit), reducing characters and displaying an abbreviated entry

for each column heading (reducing a number of characters of each entry in the

selected data field).

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Reduce
number of
characters

Compare each entry to a


specified limit of characters.

Bertram at FIG. 7 (EX1007), annotated


The last character for the column heading is retrieved via step 18C. It
is then determined if the width of the column heading is greater
than the width set in step 52 of the method 50, via step 182.... If the
width is greater than the set width, then via step 186 it is determined
if the character is the same type as set in steps 172, 174, or 176.... If
the character matches the current character type in step 186, then the
character is removed in step 188... Thus, each character in the
column heading is tested to see if it matches the current character
type and removed if a match is found.
Bertram (EX1007), at 8:2257, see also 8:5865. Thus, Maloneys display of

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Petition for Inter Partes Review of U.S. Patent 7,302,423

entries for a selected data field in view of Bertrams technique of determining a

number of characters in column entries and then reducing a number of characters

in those column entries if the entries exceed a set width renders obvious if the first

quantity exceeds a specified limit, reducing a number of characters to be displayed

for each entry from the selected data field. Greenspun pp.5760 (EX1005) see also

[3.4] and supra VI.A.3 (motivations to combine).

[3.5.2] performing a truncation that reduces the number of characters to be


displayed from the selected data filed [sic],
As noted above at [3.5.1], Maloney in view of Bertram renders obvious if

the first quantity exceeds a specified limit, reducing a number of characters to be

displayed for each entry from the selected data field. Further, Bertram teaches

reducing the number of characters by performing a truncation.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Performing a
truncation

Bertram at FIG. 7 (EX1007), annotated

Bertram explains the process of removing characters in Figures 7 and 8: for

a given entry, if the width is greater than the set width, and if the character

matches the current character type in step 186, then the character is removed in

step 188. Bertram (EX1007), at 8:3044. First, the character types according to

step 172 are removed if appropriate; second, the character types according to step

174 are removed if appropriate; third, the character types according to step 176 are

removed if appropriate. Id. Thus, in the example of Figure 7, any spaces (e.g., a

first character type) are removed first and one at a time, then lower case vowels

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Petition for Inter Partes Review of U.S. Patent 7,302,423

would be removed if appropriate and in the same manner, then lowercase letters

would be removed if appropriate and in the same manner. Id. at 7:6067, see also

8:165.

Bertram at FIGS. 2 and 8 (EX1007), annotated


In the example of Figure 8, and taking row 220 as an example, the technique

would have started off with Bytes Received to end with BytsR. According to

the passage spanning columns 8 and 9 and Figure 7, the technique would have

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Petition for Inter Partes Review of U.S. Patent 7,302,423

started by removing the space to get BytesReceived. Then according to actions

174192, the technique would have removed lower case vowels by starting at the

last character and working its way sequentially through the characters. According

to actions 174192, this step would have sequentially removed the lower case

vowels to produce BytsRcvd. Then, according to actions 176192, the technique

would have sequentially removed lower case letters starting at the last letter until

decision box 182 yielded a NO. Thus, the technique would have removed the d, v,

then c in that order. Such action includes truncation because it is the deletion or

omission of the leading or of a trailing portion of a string in accordance with

specified criteria, as construed as described above at V.A above.

Thus, Bertrams sequential deletion of trailing letters at actions 176192

teaches performing a truncation that reduces the number of characters to be

displayed from the selected data filed [sic]. Bertrams actions 178196 also teach

the claimed truncation. Thus, Maloney in view of Bertram renders this feature

obvious. Greenspun pp.6064 (EX1005) see also supra [3.4] and VI.A.3

(motivations to combine).

[3.5.3] comparing the reduced number of characters to the specified limit, and
Bertram teaches comparing the reduced number of characters to the

specified limit. As noted at [3.5.2], Bertram teaches a loop at steps 172192, 174

192, and 176192 of Fig. 7 to iteratively compare the number of characters to the

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Petition for Inter Partes Review of U.S. Patent 7,302,423

set width (a specified limit) and reduce a number of characters until the width of

the column heading is less than or equal to the set width. Bertram also teaches

steps 178196 to compare a reduced number of characters to a specified limit. See

also Bertram (EX1007), at 10:3640.

Comparing the
reduced number of
characters to the
specified limit

Loop to iteratively reduce a


number of characters

Bertram at FIG. 7 (EX1007), annotated


Thus, Maloney in view of Bertram renders this feature obvious. Greenspun

pp.6466 (EX1005) see also supra [3.4] and VI.A.3 (motivations to combine).

[3.6] if the reduced number of characters exceeds the specified limit, repeating
the truncation and comparing steps until the reduced number of characters to be

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Petition for Inter Partes Review of U.S. Patent 7,302,423

displayed from the selected data field is less than or eciual [sic] to the specified
limits; and
Bertram teaches this feature. As noted at [3.5.2], in the example of Figure 8,

and taking row 220 as an example, the technique would have started off with

Bytes Received to end with BytsR. According to the passage spanning

columns 8 and 9 and Figure 7, the technique would have started by removing the

space to get BytesReceived. Also, as explained at [3.5.2], at actions 176192, the

technique would have sequentially removed lower case letters starting at the last

letter until decision box 182 yielded a NO. Thus, the technique would have

removed the d, v, then c in that order by repeating the truncation and comparing

steps in the iterative loop discussed at [3.5.3]. Greenspun p.66 (EX1005) see also

supra [3.4] and VI.A.3 (motivations to combine).

[3.7] displaying the reduced number of characters for each entry from the
selected data field.
Maloney in view of Bertram renders this feature obvious. For instance, as

noted at [3.4], Maloney teaches displaying entries from selected data fields in the

windows of Figures 19 and 20. Additionally, Bertram teaches removing a number

of characters that are displayed in a tabular format in columns, such as in the

Figure 20 of Maloney, as discussed above at [3.5.1][3.6]. Thus, Maloneys

displaying entries from the selected data fields in view of Bertrams removing a

number of characters that are displayed in a tabular format in columns teaches

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Petition for Inter Partes Review of U.S. Patent 7,302,423

displaying the reduced number of characters for each entry from the selected data

field. Greenspun pp.6667 (EX1005) see also supra [3.4] and VI.A.3

(motivations to combine). Thus, claim 3 is unpatentable over Maloney in view of

Bertram.

Claim 4

[4.1] The method of claim 3, wherein the specified limit is fixed.


Bertram teaches that the set width of the column headings (specified limit) is

unchanged during the actions of Fig. 7 (is fixed). Greenspun pp.6768 (EX1005)

see also supra [3.4] and VI.A.3 (motivations to combine).

Set width is fixed.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Bertram at FIG. 7 (EX1007), annotated


Thus, claim 4 is unpatentable over the combination of Maloney and Bertram.

Claim 7

[7.1] 7. The method of claim 3, wherein the specified limit is a user-determined


limit.
Maloney in view of Bertram renders this feature obvious. Bertram teaches

the set width (specified limit) is determined by a user. The user enters the desired

width of the column heading via step 52. Bertram (EX1007), at 4:6667.

Bertrams set width, as entered by a user, teaches the specified limit is a

user-determined limit. Thus, claim 7 is unpatentable over the combination of

Maloney and Bertram. Greenspun pp.6869 (EX1005) see also supra [3.4] and

VI.A.3 (motivations to combine).

Claim 8

[8.1] The method of claim 3, wherein a parameter is related to the number of


characters to be displayed from the selected data field, and
Maloney in view of Bertram renders this feature obvious. As noted above at

[3.5.2], Maloney in view of Bertram teaches reducing a number of characters to be

displayed. Additionally, Bertrams width in steps 182 and 194 teaches a parameter,

and it is related to the set width by the actions in steps 182, 194.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Width is a
parameter

Bertram at FIG. 7 (EX1007), annotated


Bertrams width, which is compared to a set width and is reduced by the

actions of Figure 7 to be equal to or less than the set width, teaches a parameter

related to the number of characters to be displayed from the selected data field.

Greenspun pp.6970 (EX1005) see also supra [3.4] and VI.A.3 (motivations to

combine).

[8.2] wherein the truncation comprises decrementing the parameter.


Maloney in view of Bertram renders this feature obvious. As noted above at

[8.1], the width teaches a parameter. Bertram teaches decrementing the width by

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Petition for Inter Partes Review of U.S. Patent 7,302,423

one character with each pass through step 188 as the truncation is performed.

Decrementing width

Bertram at FIG. 7 (EX1007), annotated


Bertrams truncation that reduces the width of the character by decrementing

the width by one at each pass through step 188 teaches the truncation comprises

decrementing the parameter. Greenspun pp.7071 (EX1005) see also supra

VI.A.3 (motivations to combine). Thus, claim 8 is unpatentable over the

combination of Maloney and Bertram.

Claim 9

[9.1] The method of claim 8, wherein the parameter is decremented or

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Petition for Inter Partes Review of U.S. Patent 7,302,423

incremented by a value of one.


Maloney in view of Bertram renders this feature obvious. As noted in [8.2],

the width (the parameter) is decremented by one with each pass through step 188.

Greenspun p.72 (EX1005) see also supra VI.A.3 (motivations to combine).

Thus, claim 9 is unpatentable over the combination of Maloney and Bertram.

Claim 13

[13.1] The method of claim 3, further comprising: receiving a first constraint,


wherein the first constraint is related to a data element in a data field; and
Maloney teaches this feature. For instance, Maloney teaches two example

constraintscustomer and sale dates. FIG. 20 shows that the customer with a last

name of Smith, having a store number of G8392 purchased items from a store

named X Co. The master level record 56 owns, or controls, the detail level records

58 displayed in each of the detail level scrolling tables 52.... Other forms with this

format can be produced by the specification of other customers and sales dates.

Maloney (EX1006), at 18:2243. Thus, either or both of Maloneys customer and

sales date constraints, used in Figure 20 to retrieve records from the database, teach

receiving a first constraint, wherein the first constraint is related to a data element

in a data field. Greenspun pp.7273 (EX1005).

[13.2] receiving one or more subsequent constraints,


Maloney teaches this feature. As noted above at [13.1], Maloney teaches at

least two constraints (customer and sale date) that are used to search the database.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Either one of the constraints, when being entered as the second one of the two,

teaches receiving one or more subsequent constraints. Greenspun p.73

(EX1005).

[13.3] wherein search results are generated based on a combination of the first
and the one or more subsequent constraints.
Maloney teaches this feature. As noted above at [13.1], the search results in

Figure 20 are generated based on the customer and sales date constraints.

Accordingly, the search results in Figure 20 are generated based on a combination

of the first and the one or more subsequent constraints. Greenspun p.73 (EX1005).

Thus, claim 13 is unpatentable over the combination of Maloney and Bertram.

B. Challenge 2: Claims 14, 79, and 13 are unpatentable under 35


U.S.C 103 over Excel in view of Bertram

1. Overview of Excel

Microsoft Excel 2000 Bible by Walkenbach (Excel) is a complete guide

to a powerful and easy-to-use spreadsheet product, referring to the popular

Microsoft Excel spreadsheet product. Excel 2000 (EX1009) at Preface. Excel

provides explanatory examples of use for beginning, intermediate, and advanced

users. Id. Chapter 24 of Excel provides examples for using external database files

in the Microsoft Excel 2000 spreadsheet product. In particular, Figure 24-12

provides a Query window, which allows a user to structure a query by selecting

fields and constraints, and a Data pane that displays the results of the query.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Note that the Data pane displays the results in a tabular format as columns and

rows of cells. Greenspun 6264 (EX1005).

2. Reasons to Combine Excel and Bertram

Bertram and its benefits are described above at VI.A.2. Excel

acknowledges that sometimes text is too wide to fit in a column: Excel displays as

much of the text as possible (the full text is contained in the cell; its just not

displayed). Excel (EX1009), at 16. Bertram complements the proposed solutions

of Excel by describing the abbreviation algorithm of Figure 7 for data displayed in

columns. Greenspun, 67 (EX1005).

First, Excel and Bertram are analogous prior art and in the same field of

endeavor. Both Excel and Bertram disclose displaying data in a tabular format

and, more specifically, in columns. Excel (EX1009), Figure 24-12 Bertram

(EX1007), at Abstract; Greenspun, 66 (EX1005).

Second, Bertram provides an express motivation to use its teachings in the

system of Excel. Bertram teaches that its technique is used in the context of

displaying a plurality of columns on a display screen and teaches that its

technique can display information in a format more easily viewed by a user.

Bertram (EX1007), at 2:5860, 3:46. Bertram also described that the technique is

generally applicable to entries containing text data, such as those of Excels

Figure 24-12. Excel teaches displaying a multitude of entries in the form of Figure

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Petition for Inter Partes Review of U.S. Patent 7,302,423

24-12, which uses a tabular format to show the entries in columns. Thus, a

POSITA would have been motivated to apply Bertrams technique to the displays

of Excel (e.g., the columns in the Data pane) in order to ensure that the columns of

data can fit within a display window and would be readable to a user, would use

space efficiently, would preserve information, and would adapt to new columns, as

suggested by Bertram. Greenspun,68 (EX1005).

In addition, combining the teachings of Excel and Bertram would produce

predictable, operable results. Specifically, applying Bertrams technique to the

Query window is a use of known technique (reducing a number of characters in

column data) to improve a similar method (a graphical user interface displaying

data in columns) in the same way. The implementation of Bertrams technique to

the interface of Excel is also an application of a known technique (reducing a

number of characters in column data) to a known method (a graphical user

interface displaying data in columns) ready for improvement to yield predictable

results by achieving the benefits of Bertram, such as preserving data so that the

resulting abbreviated text is meaningful to a user. The operation of Excel would

essentially be unchanged, except for implementing Bertrams abbreviation

technique, which demonstrates that a POSITA would have a reasonable

expectation of success. Greenspun 69 (EX1005).

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Petition for Inter Partes Review of U.S. Patent 7,302,423

3. Challenges 1 and 2 are not Substantially the Same

Challenge 1 and Challenge 2 both challenge the same claims of the 423

Patent, but are not substantially the same. Challenge 2 relies upon Petitioners

evidence as to prior art date of Excel to show approximately 5 months prior art

status under 35 U.S.C. 102(a), whereas Maloney is 102(b) prior art and

Bertram is 102(e) prior art by about 18 months. In other words, the Challenges

using Maloney + Bertram are less susceptible to a showing of prior invention by

the Patent Owner than are the challenges using Excel + Bertram. Thus, institution

of this IPR is warranted under all challenges, as any alleged redundancy or

substantial similarity would not place a significant burden on the Patent Owner

and the Board nor cause unnecessary delays. See Liberty Mutual Ins. Co. v.

Progressive Cas. Ins. Co., CBM2012-00003, Paper 7 at 2 (PTAB Oct. 25, 2012).

4. Analysis

Claim 1

[1.1] 1. A computer-implemented method for displaying data comprising:


Excel teaches this feature. For instance, Excel shows an example interface of

the Microsoft Excel spreadsheet product, including a data pane to display data.

Excel (EX1009), Figure 24-12, see also at 15. Thus, Excels graphical user

interface teaches this limitation. Greenspun pp.7778 (EX1005).

[1.2] determining a database schema for a database;


Excel teaches this feature. As noted at V.B, determining a database

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schema includes determining a collection of tables of a database. Looking at

Figure 24-12, Excel illustrates a Tables pane that determines a collection of tables

for a database by populating and displaying the Tables pane. Excel (EX1009), at 34

(Tables pane: The top pane, which holds the data tables for the database. Each

data table window has a list of the fields in the table.). Excel further discloses that

the Tables pane may include multiple tables. Excel (EX1009), at 35. Therefore,

Excels interface that populates and displays the Tables pane with tables teaches

determining the collection of tables of the database, as construed above at V.B,

i.e., determining a database schema for a database. Greenspun pp.7880

(EX1005).

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Determining a database schema

Excel at FIG. 24-12 (EX1009), annotated


[1.3] providing a list of database fields, wherein the list includes a descriptor
indicating a data category;
Excel teaches this feature. First, Figure 24-12 illustrates an interface

providing a list of database fields, such as ACTUAL, BUDGET,

CATEGORY, and the like. Furthermore, the names of each of the fields

indicates a data category. For instance, the field named CATEGORY has a text

descriptor (CATEGORY) providing an indication of the contents of the field.

Other fields in the list have similar descriptors. Thus, Excels list of database

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fields, where each of the database fields has a text descriptor indicating a contents

of the field, teaches providing a list of database fields, wherein the list includes a

descriptor indicating a data category. Greenspun pp.8082 (EX1005).

List of database
fields

Excel at FIG. 24-12 (EX1009), annotated


[1.4] receiving a search selection for a database field on the provided list of
database fields;

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Excel teaches this feature. Creating a query consists of the following steps:

1. Drag fields from the Tables pane to the Data pane. You can drag as many

fields as you want. These fields are the columns that the query will return. You

can also double-click a field instead of dragging it. Excel (EX1009), at 34.

Accordingly, Excels dragging or double-clicking a field to select a field as part of

a query teaches, receiving a search selection for a database field on the provided

list of database fields. Greenspun pp.8283 (EX1005).

[1.5] determining a number of characters included in each entry in the selected


database field; and
Excel and Bertram render this feature obvious. For instance, Excel teaches

displaying entries for the selected database fields. Specifically, Excel shows entries

arranged in rows and columns in the Data pane of Figure 24-12. Data pane: The

bottom pane, which holds the data that passes the criteria. Excel (EX1009), at 34.

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Displaying entries

Excel at FIG. 24-12 (EX1009), annotated


Additionally, Bertram teaches determining a number of characters included

in each column heading (entry) for all the columns in a viewed table. It is then

determined if the width of the column heading is greater than the width set in

step 52 of the method 50, via step 182. Bertram (EX1007), at 8:2229, see also

8:4265.

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Determining a number of
characters in each entry

Bertram at FIG. 7 (EX1007), annotated


A POSITA would have incorporated Bertrams teaching into Excel to

shorten text in columns of Excels Figure 24-12 while preserving readability and

as described above in VI.B.2. Thus, Excels display of entries for a selected

database field in view of Bertrams technique of determining a number of

characters in column entries renders obvious determining a number of characters

included in each entry in the selected database field. Greenspun, pp.8488

(EX1005).

[1.6] if the number of characters included in each entry exceeds a specified

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amount of characters, displaying a portion of each entry in the selected database


field, wherein a number of characters displayed in each portion is less than or
equal to the specified amount of characters; and
Excel in view of Bertram renders this feature obvious. As discussed supra

[1.5], Bertram and Excel render obvious determining a number of characters

included in each entry. Additionally, Bertram teaches if the number of characters

included in each column heading (entry) exceeds a set width (exceeds a specified

amount of characters), removing characters and displaying an abbreviated entry for

each column heading (displaying a portion of each entry in the selected database

field). The number of characters in an abbreviated entry (a displayed portion of

each entry) is equal to or less than the set width set (a specified amount of

characters).

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Displayed
portion is
less than
specified
amount

Compare each entry to a


specified amount of
characters.

Bertram at FIG. 7 (EX1007), annotated


The last character for the column heading is retrieved via step 18C. It
is then determined if the width of the column heading is greater
than the width set in step 52 of the method 50, via step 182.... If the
width is greater than the set width, then via step 186 it is determined
if the character is the same type as set in steps 172, 174, or 176.... If
the character matches the current character type in step 186, then the
character is removed in step 188.... Thus, each character in the
column heading is tested to see if it matches the current character
type and removed if a match is found.
Bertram (EX1007), at 8:2257, see also 8:5865. Thus, Excels display of entries

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for a selected database field in view of Bertrams technique of determining a

number of characters in column entries and then reducing a number of characters

in those column entries if the entries exceed a specified width renders obvious if

the number of characters included in each entry exceeds a specified amount of

characters, displaying a portion of each entry in the selected database field,

wherein a number of characters displayed in each portion is less than or equal to

the specified amount of characters. Greenspun pp.8891 (EX1005); see also supra

[1.5] and VI.B.2 (motivations to combine).

[1.7] if the number of characters included in each entry does not exceed the
specified amount, displaying each entry in its entirety.
Excel in view of Bertram renders this feature obvious. As discussed supra

[1.5], Bertram and Excel render obvious determining a number of characters

included in each entry. Additionally, Bertram teaches that if the number of

characters in a column heading (entry) does not exceed the width set in step 52

(specified amount), displaying the column heading in its entirety. It is then

determined if the width of the column heading is greater than the width set in

step 52 of the method 50, via step 182. If the width is not greater than the width

set, the abbreviation is terminated via step 184. Bertram (EX1007), at 8:2229;

see also 8:58-65.

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Displaying a
column
header in its
entirety if
NO at 182
or 194

Compare each entry to


a specified amount of
characters.

Bertram at FIG. 7 (EX1007), annotated


Thus, Excels display of entries for a selected database field in view of

Bertrams technique of determining a number of characters in column entries and

then not reducing a number of characters in those column entries teaches if the

entries do not exceed a specified width teaches if the number of characters

included in each entry does not exceed the specified amount, displaying each entry

in its entirety. Greenspun pp.9193 (EX1005) see also supra [1.5] and VI.B.2

(motivations to combine).

Accordingly, claim 1 is unpatentable over the combination of Excel and

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Bertram.

Claim 2

[2.1] The method of claim 1, further comprising providing a key word search.
Excel teaches this feature. Specifically, the shortcut key combination Ctrl+F

starts Find, which is a keyword search. Excel (EX1009), at 42. Thus, Excels

shortcut key combination Ctrl+F and Find, teaches providing a key word search.

Thus, claim 2 is unpatentable over the combination of Excel and Bertram.

Greenspun p.93 (EX1005).

Claim 3

[3.1] A computer-implemented method for formatting data for display,


comprising:
Excel teaches this feature by disclosing an example interface of the

Microsoft Excel spreadsheet product, including a data pane to format and display

data. See Excel at Figure 24-12. Excel (EX1009), Figure 24-12, see also at 15;

Greenspun, pp.9394 (EX1005).

[3.2] generating a list of data fields;


Excel at Figure 24-12 teaches generating a list of data fields by generating

an interface providing a list of database fields, such as ACTUAL, BUDGET,

CATEGORY, and the like. Also, Tables pane: The top pane ... has a list of

fields in the table. Excel (EX1009), at 34; Greenspun, pp.9497 (EX1005).

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List of data fields

Excel (EX1009), at 555, annotated


[3.3] receiving a first data field selection from the list of data fields;
Excel discloses receiving a first data field selection from the list of data

fields. For instance, a field may be selected as a column to be returned by a query.

Creating a query consists of the following steps: 1. Drag fields from the Tables

pane to the Data pane. You can drag as many fields as you want. These fields are

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the columns that the query will return. You can also double-click a field instead

of dragging it. Excel (EX1009), at 34. Accordingly, Excels dragging or double-

clicking a field to select a field as part of a query teaches receiving a first data field

selection from the list of data fields. Greenspun pp.9799 (EX1005).

[3.4] determining a first quantity indicative of a number of characters in each


entry of the selected data field;
Excel and Bertram render this feature obvious. First, as noted at [3.3], Excel

teaches a search selection for data fields by dragging and dropping or double-

clicking data fields. Second, Excel teaches displaying entries for the selected

database fields. Specifically, Excel shows entries arranged in rows and columns in

the Data pane of Figure 24-12 (Data pane: The bottom pane, which holds the data

that passes the criteria.). Excel (EX1009), at 34.

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Displaying entries

Third, Bertram teaches determining a number of characters included in each

column heading (entry) for all the columns in a viewed table.

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Determining a number
of characters in each
entry

Bertram at FIG. 7 (EX1007), annotated


Bertram discusses the method Figure 7, and in particular steps 180, 182:

The last character for the column heading is retrieved via step 18C [sic]. It is then

determined if the width of the column heading is greater than the width set in

step 52 of the method 50, via step 182. Bertram (EX1007), at 8:2229; see also

6:3854, 7:2532, 8:5865. Thus, Excels display of entries for a selected data

field in view of Bertrams technique of determining a number of characters in

column entries renders obvious determining a first quantity indicative of a number

of characters in each entry of the selected data field. A POSITA would have

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Petition for Inter Partes Review of U.S. Patent 7,302,423

incorporated Bertrams teaching into Excel to shorten text in columns of Excels

Figure 24-12 while preserving readability and as described above in VI.B.2.

Greenspun, pp.99103 (EX1005).

[3.5.1] if the first quantity exceeds a specified limit, reducing a number of


characters to be displayed for each entry from the selected data field,
comprising:
Excel in view of Bertram renders this feature obvious. As discussed supra

[3.4], Bertram and Excel render obvious determining a first quantity indicative of a

number of characters. Additionally, Bertram teaches if the number of characters

included in each column heading (entry) exceeds a set width (a specified limit),

reducing characters and displaying an abbreviated entry for each column heading

(reducing a number of characters of each entry in the selected data field).

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Reduce
number of
characters

Compare each entry to a


specified limit of characters

Bertram at FIG. 7 (EX1007), annotated


The last character for the column heading is retrieved via step 18C. It
is then determined if the width of the column heading is greater
than the width set in step 52 of the method 50, via step 182 ... If the
width is greater than the set width, then via step 186 it is determined
if the character is the same type as set in steps 172, 174, or 176.... If
the character matches the current character type in step 186, then the
character is removed in step 188.... Thus, each character in the
column heading is tested to see if it matches the current character
type and removed if a match is found.
Bertram (EX1007), at 8:2257, see also 8:5865. Thus, Excels display of entries

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for a selected data field in view of Bertrams technique of determining a number of

characters in column entries and then reducing a number of characters in those

column entries if the entries exceed a set width renders obvious if the first quantity

exceeds a specified limit, reducing a number of characters to be displayed for each

entry from the selected data field. Greenspun pp.104106 (EX1005) see also supra

[3.4] and VI.B.2 (motivations to combine).

[3.5.2] performing a truncation that reduces the number of characters to be


displayed from the selected data filed [sic],
As noted above at [3.5.1], Excel in view of Bertram renders obvious if the

first quantity exceeds a specified limit, reducing a number of characters to be

displayed for each entry from the selected data field. Further, Bertram teaches

reducing the number of characters by performing a truncation.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

Performing a
truncation

Bertram at FIG. 7 (EX1007), annotated

Bertram explains the process of removing characters in Figures 7 and 8: for

a given entry, if the width is greater than the set width, and if the character

matches the current character type in step 186, then the character is removed in

step 188. Bertram (EX1007), at 8:3044. First, the character types according to

step 172 are removed if appropriate; second, the character types according to step

174 are removed if appropriate; third, the character types according to step 176 are

removed if appropriate. Id. Thus, in the example of Figure 7, any spaces (e.g., a

first character type) are removed first and one at a time, then lower case vowels

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would be removed if appropriate and in the same manner, then lowercase letters

would be removed if appropriate and in the same manner. Id. at 7:6067, see also

8:165.

Bertram at FIGS. 2 and 8 (EX1007), annotated


In the example of Figure 8, and taking row 220 as an example, the technique

would have started off with Bytes Received to end with BytsR. According to

the passage spanning columns 8 and 9 and Figure 7, the technique would have

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Petition for Inter Partes Review of U.S. Patent 7,302,423

started by removing the space to get BytesReceived. Then according to actions

174192, the technique would have removed lower case vowels by starting at the

last character and working its way sequentially through the characters. According

to actions 174192, this step would have sequentially removed the lower case

vowels to produce BytsRcvd. Then, according to actions 176192, the technique

would have sequentially removed lower case letters starting at the last letter until

decision box 182 yielded a NO. Thus, the technique would have removed the d, v,

then c in that order. Such action includes truncation because it is the deletion or

omission of the leading or of a trailing portion of a string in accordance with

specified criteria, as construed as described above at V.A above. Bertram

teaches performing this truncation for each of columns 220260.

Thus, Bertrams sequential deletion of trailing letters at actions 176192

teaches performing a truncation that reduces the number of characters to be

displayed from the selected data filed [sic]. Bertrams actions 178196 also teach

the claimed truncation. Thus, Excel in view of Bertram renders this feature

obvious. Greenspun pp.106110 (EX1005) see also supra [3.4] and VI.B.2

(motivations to combine).

[3.5.3] comparing the reduced number of characters to the specified limit, and
Bertram teaches comparing the reduced number of characters to the

specified limit. Specifically, as noted at [3.5.2], Bertram teaches a loop at steps

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172192, 174192, and 176192 of Fig. 7 to iteratively compare the number of

characters to the set width (a specified limit) and reduce a number of characters

until the width of the column heading is less than or equal to the set width. Bertram

also teaches steps 178196 to compare a reduced number of characters to a

specified limit.

Comparing the
reduced number of
characters to the
specified limit

Loop to iteratively reduce a


number of characters

Bertram at FIG. 7 (EX1007), annotated


Thus, Maloney in view of Bertram renders this feature obvious. Greenspun

pp.110112 (EX1005) see also supra [3.4] VI.B.2 (motivations to combine).

[3.6] if the reduced number of characters exceeds the specified limit, repeating

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the truncation and comparing steps until the reduced number of characters to be
displayed from the selected data field is less than or eciual [sic] to the specified
limits; and
Bertram teaches this feature. As noted at [3.5.2], in the example of Figure 8,

and taking row 220 as an example, the technique would have started off with

Bytes Received to end with BytsR. According to the passage spanning

columns 8 and 9 and Figure 7, the technique would have started by removing the

space to get BytesReceived. Also, as explained at [3.5.2], at actions 176192, the

technique would have sequentially removed lower case letters starting at the last

letter until decision box 182 yielded a NO. Thus, the technique would have

removed the d, v, then c in that order by repeating the truncation and comparing

steps in the iterative loop discussed at [3.5.3]. Greenspun p.112 (EX1005) see also

supra [3.5.2] and VI.B.2 (motivations to combine).

[3.7] displaying the reduced number of characters for each entry from the
selected data field.
Excel in view of Bertram renders this feature obvious. For instance, as noted

at [3.4], Excel teaches displaying entries from selected data fields in the Data pane

of Figure 24-12. Additionally, Bertram teaches removing a number of characters

that are displayed in a tabular format in columns, as discussed above at [3.5.1]

[3.6]. Thus, Excels displaying entries from the selected data fields in view of

Bertrams removing a number of characters that are displayed in a tabular format

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in columns teaches displaying the reduced number of characters for each entry

from the selected data field. Greenspun pp.112113 (EX1005) see also supra [3.4]

and VI.B.2 (motivations to combine). Thus, claim 3 is unpatentable over Excel

in view of Bertram.

Claim 4

[4.1] The method of claim 3, wherein the specified limit is fixed.


Bertram teaches that the set width of the column headings (specified limit) is

unchanged during the actions of Fig. 7 (is fixed). Greenspun pp.113114

(EX1005) see also supra [3.4] and VI.B.2 (motivations to combine).

Set width is fixed.

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Bertram at FIG. 7 (EX1007), annotated


Thus, claim 4 is unpatentable over the combination of Excel and Bertram.

Claim 7

[7.1] 7. The method of claim 3, wherein the specified limit is a user-determined


limit.
Excel in view of Bertram renders this feature obvious. Bertram teaches the

set width (specified limit) is determined by a user. The user enters the desired

width of the column heading via step 52. Bertram (EX1007), at 4:6667.

Bertrams set width, as entered by a user, teaches the specified limit is a user-

determined limit. Thus, claim 7 is unpatentable over the combination of Excel and

Bertram. Greenspun pp.114115 (EX1005) see also supra VI.B.2 (motivations

to combine).

Claim 8

[8.1] The method of claim 3, wherein a parameter is related to the number of


characters to be displayed from the selected data field, and
Excel in view of Bertram renders this feature obvious. As noted above at

[3.5.2], Excel in view of Bertram teaches reducing a number of characters to be

displayed. Additionally, Bertrams width in steps 182 and 194 teaches a parameter,

and it is related to the set width by the actions in steps 182, 194.

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Width is parameter

Bertram at FIG. 7 (EX1007), annotated


Bertrams width, which is compared to a set width and is reduced by the

actions of Figure 7 to be equal to or less than the set width, teaches a parameter

related to the number of characters to be displayed from the selected data field.

Greenspun pp.115116 (EX1005) see also supra [3.4] and VI.B.2 (motivations

to combine).

[8.2] wherein the truncation comprises decrementing the parameter.


Excel in view of Bertram renders this feature obvious. As noted above at

[8.1], the width teaches a parameter. Bertram teaches decrementing the width by

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Petition for Inter Partes Review of U.S. Patent 7,302,423

one character with each pass through step 188 as the truncation is performed.

Decrementing width

Bertram at FIG. 7 (EX1007), annotated


Bertrams truncation that reduces the width of the character by decrementing

the width by one at each pass through step 188 teaches the truncation comprises

decrementing the parameter. Greenspun pp.116117 (EX1005) see also supra

VI.A.3 (motivations to combine). Thus, claim 8 is unpatentable over the

combination of Excel and Bertram.

Claim 9

[9.1] The method of claim 8, wherein the parameter is decremented or

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Petition for Inter Partes Review of U.S. Patent 7,302,423

incremented by a value of one.


Excel in view of Bertram renders this feature obvious. As noted in [8.2], the

width (the parameter) is decremented by one with each pass through step 188.

Greenspun p.118 (EX1005) see also supra VI.B.2 (motivations to combine).

Thus, claim 9 is unpatentable over the combination of Excel and Bertram.

Claim 13

[13.1] The method of claim 3, further comprising: receiving a first constraint,


wherein the first constraint is related to a data element in a data field; and
Excel teaches this feature by disclosing criteria (constraints) in the Criteria

pane. Example criteria include Jan, Feb, Mar for the MONTH field, and

the other fields DIVISION, DEPARTMENT, and CATEGORY have criteria as

well. The criteria are used to retrieve data (data elements) from the fields of the

database. Enter criteria in the Criteria pane. When you activate this pane, the

first row (labeled Criteria Field) displays a drop-down list that contains all the field

names. Select a field and enter the criteria below it. Query updates the Data pane

automatically, treating each row like an OR operator. Excel (EX1009), at 34.

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constraints

Thus, the criteria to retrieve records from the database, teach receiving a

first constraint, wherein the first constraint is related to a data element in a data

field. Greenspun pp.118120 (EX1005).

[13.2] receiving one or more subsequent constraints,


Excel teaches this feature. As noted above at [13.1], Excel teaches at least

three constraints (Jan, Feb, March) for the month field alone that are used to

search the database. Each subsequently added constraint is treated as a OR

operator. Excel (EX1009), at 34. Either one of the constraints, when being entered

as the second one of the two, teaches receiving one or more subsequent

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constraints. Greenspun p.120 (EX1005).

[13.3] wherein search results are generated based on a combination of the first
and the one or more subsequent constraints.
Excel teaches this feature. As noted above at [13.1], the search results are

generated based on constraints in the Criteria pane. Select a field and enter the

criteria below it. Query updates the Data pane automatically, treating each row

like an OR operator. Excel (EX1009), at 555. Accordingly, the search results

being generated based on the criteria teach, the search results are generated based

on a combination of the first and the one or more subsequent being gender

constraints. Greenspun p.120 (EX1005). Thus, claim 13 is unpatentable over the

combination of Excel and Bertram.

C. Challenge 3: Claims 5 and 6 are unpatentable under 35 U.S.C


103 over Maloney in view of Bertram, and Kanevsky

1. Overview of Kanevsky

Like Maloney and Bertram, Kanevsky is directed a system and method for

displaying data on a computer screen or window. Kanevsky (EX1008), at Abstract,

1:611. Kanevsky specifically acknowledges that screens and windows may vary in

size and that display of data should be adapted thereto: a viewing-access strategy

is provided for such visual devices varying, for example, from standard PC

monitors, laptop screens and palmtops to webphone and digital camera displays, to

any device, with a display, capable of web browsing, and from large windows to

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small windows. Id. at 1:6065. Kanevsky further permit[s] automatic display of

the content of web pages in the most friendly manner for a user viewing this

content from a screen or window of a certain size. Id. at 2:25. Greenspun,71

(EX1005).

2. Reasons to Combine Maloney, Bertram, and Kanevsky

The combination of Maloney, Bertram, and Kanevsky would have been

obvious for several reasons. First, all three references are analogous prior art and

in the same field of endeavor, as the references all pertain to displaying data on a

computer screen or window. In the combination of Maloney and Bertram, text in

columns may be abbreviated to fit a desired width. Kanevskys technique

acknowledges that different screens and window sizes may be used by various

users and that the display of data should be adapted to a given screen or window

size: an adaptation strategy employs variables that provide size of screen and/or

window information associated with the visual display from which a call to a web

site was initiated. Kanevsky (EX1008), at 2:1619. Thus, a POSITA would have

used Kanevskys teaching of adaptive data display sizes for different screens and

windows and applied that to the combination of Maloney and Bertram by adjusting

Bertrams set width. Greenspun 73 (EX1005).

Second, Kanevsky suggests the combination by describing advantages of its

invention: [a]dvantageously, any type of display device and associated screen

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may be provided by user: e.g., webphone or palmtop. Also, any size window may

be displayed on such screen. Kanevsky (EX1008), at 2:2023. Kanevsky teaches

that one use of its invention is that a display mode message can be represented as

a mode number that uniquely defines display parameters.... [and] that tables may

be created which contain display characteristics or parameters associated with a

given display terminal and each table can be identified by a unique mode number.

Id. at 6:5357. A POSITA would have understood that the set width of Bertram

may be variable and set based on a size characteristic of a terminal by, e.g., using

tables that contain display characteristics of terminals, as taught by Kanevsky.

Accordingly, a POSITA would have found it obvious to incorporate the teachings

of Kanevsky to achieve a system that can advantageously accommodate a variety

of different sized windows and display screens. Id. Greenspun,74 (EX1005).

Finally, combining the teachings of Kanevsky with Maloney and Bertram

would produce predictable, operable results because it would have been no more

than the combination of known elements according to known methods, as

Kanevsky recites familiar components (e.g., computing devices) and techniques

(displaying information on those devices). Kanevsky (EX1008), at 1:566, 2:810;

The combination would have been straightforward and uses similar concepts well-

known at the time, so a POSITA would have had a reasonable expectation of

success. Greenspun 75 (EX1005).

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3. Analysis

Claim 5

[5.1] The method of claim 3, wherein the specified limit is variable.


Maloney, Bertram, and Kanevsky render this feature obvious. As discussed

above in limitation [3.5.1], Bertrams set width teaches the claimed specified limit.

Further, as discussed above at VI.C.1, Kanevsky teaches an adaptation strategy

[that] employs variables that provide size of screen and/or window information

associated with the visual display from which a call to a web site was initiated.

Kanevsky (EX1008), at 2:1619; see also 1:562:19, 2:203:19, 6:537:56. A

POSITA would have found it obvious incorporate Kanevskys screen size webpage

adaptation technique, at least to further refine Bertrams text abbreviation

technique and to display Maloneys database data on a variety of different screen

sizes and window sizes. In other words, a POSITA would have made Bertrams

specified limit variable and determined dynamically based on a screen size or

window size given the teaching of Kanevsky to adapt to a variety of screen sizes.

Greenspun, pp.123128 (EX1005).; see supra VI.C.2 (motivations to combine).

Thus, claim 5 is unpatentable over the combination of Maloney, Bertram, and

Kanevsky.

Claim 6

[6.1] The method of claim 3, wherein the data are displayed on a terminal, and
Maloney teaches the data are displayed on a terminal. Forms are usually

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sent to a computer screen 20 while reports are usually sent to a printer 22.

Maloney (EX1006), at 4:520; see also Greenspun, pp.128129 (EX1005).

[6.2] wherein the specified limit is determined dynamically, based on a


characteristic of the terminal.
See the analysis supra at [5.1]. Id. at __ (EX1005) and VI.C.2

(motivations to combine). Thus, claim 6 is unpatentable over Maloney, Bertram,

and Kanevsky. Greenspun, pp.129133 (EX1005).

D. Challenge 4: Claims 5 and 6 are unpatentable under 35 U.S.C


103 over Excel in view of Bertram, and Kanevsky

1. Reasons to Combine Excel, Bertram, and Kanevsky

Kanevsky is described supra at VI.C.1

The combination of Excel, Bertram, and Kanevsky would have been obvious

for several reasons. First, all three references are analogous prior art and in the

same field of endeavor, as the references all pertain to displaying data on a

computer screen or window. In the combination of Excel and Bertram, text in

columns may be abbreviated to fit a desired width. Kanevskys technique

acknowledges that different screens and window sizes may be used by various

users and that the display of data should be adapted to a given screen or window

size: an adaptation strategy [that] employs variables that provide size of screen

and/or window information associated with the visual display from which a call

to a web site was initiated. Kanevsky (EX1008), at 2:1619. Thus, a POSITA

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would have readily understood Kanevskys teaching of adaptive display sizes for

different screens and windows and applied it to the combination of Excel and

Bertram by sinply adjusting Bertrams set width. Greenspun,79 (EX1005).

Second, Kanevsky suggests the combination by describing advantages of its

invention: the [a]dvantageously, any type of display device and associated screen

may be provided by user: e.g., webphone or palmtop. Also, any size window may

be displayed on such screen. Kanevsky (EX1008), at 2: 2023. For instance,

Kanevsky teaches that one use of its invention is that a display mode message can

be represented as a mode number that uniquely defines display parameters.... [and]

that tables may be created which contain display characteristics or parameters

associated with a given display terminal and each table can be identified by a

unique mode number. Id. at 6:5357. A POSITA would have understood that the

set width of Bertram may be variable and set based on a size characteristic of a

terminal by, e.g., using tables that contain display characteristics of terminals, as

taught by Kanevsky. Accordingly, a POSITA would have found it obvious to

incorporate the teachings of Kanevsky to have a system that can advantageously

accommodate different-sized windows and display screens. Greenspun 80

(EX1005).

Finally, combining the teachings of Kanevsky with Excel and Bertram would

produce predictable, operable results, at least because it would have been no more

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Petition for Inter Partes Review of U.S. Patent 7,302,423

than the combination of known elements according to known methods, as

Kanevsky recites familiar components (e.g., computing devices) and techniques

(displaying information on those devices). Kanevsky (EX1008), at 1:566, 2:810;

The combination would have been straightforward and uses similar concepts well-

known at the time, so a POSITA would have had a reasonable expectation of

success. Greenspun 81 (EX1005).

2. Analysis

Claim 5

[5.1] The method of claim 3, wherein the specified limit is variable.


Excel, Bertram, and Kanevsky render this feature obvious. As discussed

above in limitation [3.5.1], Bertrams set width teaches the claimed specified limit.

Further, as discussed above at VI.C.1, Kanevsky teaches an adaptation strategy

[that] employs variables that provide size of screen and/or window information

associated with the visual display from which a call to a web site was initiated.

Kanevsky (EX1008), at 2:1619; see also 1:562:19, 2:203:19, 6:537:56. A

POSITA would have found it obvious incorporate Kanevskys screen size webpage

adaptation technique, at least to further refine Bertrams text abbreviation

technique and to display Excels database data on a variety of different screen sizes

and window sizes. In other words, a POSITA would have known to make

Bertrams specified limit variable and determined dynamically based on a screen

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size or window size, given the teaching of Kanevsky to adapt to a variety of screen

sizes. Greenspun pp.136140 (EX1005); see supra VI.D.1 (motivations to

combine)). Thus, claim 5 is unpatentable over the combination of Excel, Bertram,

and Kanevsky.

Claim 6

[6.1] The method of claim 3, wherein the data are displayed on a terminal, and
Excel teaches the data are displayed onscreen (on a terminal). A

spreadsheet ... is a highly interactive computer program that consists of a collection

of rows and columns displayed onscreen in a scrollable window. Excel

(EX1009), at 15. Greenspun, pp.140141 (EX1005).

[6.2] wherein the specified limit is determined dynamically, based on a


characteristic of the terminal.
See analysis supra at [5.1]. Greenspun, pp.141146 (EX1005); see supra

VI.D.1 (motivations to combine). Thus, claim 6 is unpatentable over the

combination of Excel, Bertram, and Kanevsky.

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Petition for Inter Partes Review of U.S. Patent 7,302,423

VII. CONCLUSION

For the reasons above, Petitioner asks that the Patent Office order an inter

partes review trial for claims 19 and 13 and then cancel these claims as

unpatentable.

Respectfully submitted,

Date: October 6, 2017 /David M. ODell/


David M. ODell
Lead Counsel for Petitioner
Registration No. 42,044
HAYNES AND BOONE, LLP
2323 Victory Avenue, Suite 700
Dallas, Texas 75219
Telephone: 972-739-8635
Facsimile: 214-200-0853

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Petition for Inter Partes Review of U.S. Patent 7,302,423

VIII. CERTIFICATE OF WORD COUNT

Pursuant to 37 C.F.R. 42.24, the undersigned attorney for the Petitioner,

Unified Patents Inc., declares that the argument section of this Petition (Sections

II-VII) has 13996 words, according to the word count tool in Microsoft Word.

/David M. ODell/
David M. ODell
Lead Counsel for Petitioner
Registration No. 42,044

87
Petition for Inter Partes Review of U.S. Patent 7,302,423

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Unified Patents Inc. Petition for Inter Partes Review


Petitioner
U.S. Patent No. 7,302,423

CERTIFICATE OF SERVICE
The undersigned certifies, in accordance with 37 C.F.R. 42.105 and 42.6,
that service was made on the Patent Owner as detailed below.

Date of service October 6, 2017

Manner of service FEDERAL EXPRESS

Documents served Petition for Inter Partes Review, including Exhibit List;
Certificate of Word Count, Exhibits 1001 through 1012

Persons served ANDREWS KURTH KENYON LLP


1350 I Street, N.W.
Suite 1100
Washington, DC 20005

/David M. ODell/
David M. ODell
Lead Counsel for Petitioner
Registration No. 42,044

88