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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
`
`AND
`
`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
`
`Case CBM2013-00017
`Patent 6,834,282)
`_____________________
`
`
`
`PATENT OWNER’S MOTION TO AMEND
`PURSUANT TO 37 C.F.R. § 42.221
`
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`

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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`TABLE OF CONTENTS
`
`I. 
`
`First Motion to Amend; Proper Scope; Reasonable Number of Substitutes
`(37 C.F.R. § 42.221(a)) .................................................................................... 1 
`II.  Content (§ 42.221(b)) ....................................................................................... 1 
`A.  Claim Listing ................................................................................................. 1 
`B.  Support in the Original Disclosure for Proposed Claims
`(§ 42.221(b)(1)), Description of Changes and Claim Construction ............. 6 
`1.  Claim 24 (proposed substitute for original claim 1) .................................. 7 
`2.  Claim 25 (proposed substitute for original claim 2) .................................. 8 
`3.  Claim 26 (proposed substitute for original claim 3) .................................. 8 
`4.  Claim 27 (proposed substitute for original claim 5) .................................. 9 
`5.  Claim 28 (proposed substitute for original claim 6) .................................. 9 
`6.  Claim 29 (proposed substitute for original claim 11) .............................. 10 
`7.  Claim 30 (proposed substitute for original claim 12) .............................. 11 
`8.  Claim 31 (proposed substitute for original claim 13) .............................. 11 
`9.  Claim 32 (proposed substitute for original claim 15) .............................. 12 
`10.  Claim 33 (proposed substitute for original claim 16) .............................. 12 
`III.  Proposed Claims Overcome Ground Upon Which Trial Was Instituted ....... 12 
`
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`–ii–
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`I.
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`
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`First Motion to Amend; Proper Scope; Reasonable Number of
`Substitutes (37 C.F.R. § 42.221(a))
`Pursuant to 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221, and contingent upon
`
`a Board determination that original claim 1-3, 5, 6, 11-13, 15, or 16 of Patent No.
`
`6,834,282 (“the ’282 patent”) is invalid under 35 U.S.C. § 101, Patent Owner
`
`hereby moves to amend by way of one-for-one substitute claims 24-33.
`
`Specifically, substitute claims 24-28 are contingent on adverse decision as to
`
`claims 1. Substitute claim 29 is contingent on adverse decision as to claim 11;
`
`claim 30 as to claim 12; claim 31 as to claim 13; claim 32 as to claim 15; and claim
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`33 as to claim 16. This Motion to Amend is responsive to the sole ground of
`
`unpatentability (§ 101) authorized in this proceeding.1
`
`II. Content (§ 42.221(b))
`Pursuant to 37 C.F.R. § 42.221(b) and consistent with the Office Patent Trial
`
`Practice Guide, Part II, Section G, 77 FR 48766-67, Patent Owner includes a claim
`
`listing that clearly shows changes being sought by way of substitute claims 24-33.
`
`For each substitute, changes relative to the original claim are noted.
`
`A. Claim Listing
`Claims 1-3: (replaced by proposed substitute); Claim 4: (original); Claims 5 and
`
`1 The Board’s Order entered Dec. 20, 2013 (Paper No. 19) requires a separate
`showing of a patentable distinction over prior art known to Patent Owner, despite
`the institution of trial on § 101 only. As Patent Owner respectfully believes such a
`requirement is extra-statutory and extra-regulatory, the instant Motion does not
`include such a showing, as further detailed in Patent Owner’s Motion for
`Reconsideration filed Jan. 3, 2014 (Paper No. 20).
`
`
`
`–1–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`6: (replaced by proposed substitute); Claims 7-10: (original); Claims 11-13:
`
`
`
`(replaced by proposed substitute); Claim 14: (original); Claims 15 and 16:
`
`(replaced by proposed substitute); Claims 17-23: (original);
`
`Claim 24: (proposed substitute for original claim 1) A system comprising:
`
`an application server; and
`
`a browse hierarchy used by the application server for representing, and
`
`specifying a hierarchically-defined organization of a plurality of items stored in a
`
`database, said browse hierarchy comprising:
`
`a plurality of nodes stored in non-transitory storage accessible to the
`
`application server and each representative of a subset of the items stored in the
`
`database, the nodes together specifying an aggregation of constraints and operative
`
`in the application server to, for a particular browse activated one of the nodes,
`
`derive a query executable to return particular ones of the items stored in the
`
`database; and wherein:
`
`each of the nodes is a child of one other node, except for a root one of the
`
`nodes, which is a child of no other one of the nodes and is an ancestor of all of the
`
`nodes of the browse hierarchy;
`
`a first portion of the nodes of the browse hierarchy that each specify one or
`
`more of the constraints defining a scope of the corresponding subset of the items
`
`
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`–2–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`stored in the database represented by each node of the first portion relative to their
`
`
`
`respective parent node; and
`
`a second portion of the nodes of the browse hierarchy that specify no
`
`constraints, each of the nodes of the second portion instead establishing a logical
`
`grouping defining a scope of the subset of the items stored in the database
`
`represented by each respective node of the second portion.
`
`Claim 25: (proposed substitute for original claim 2) The system, including the
`
`browse hierarchy, of claim [[1]] 24 wherein the nodes of the second portion of the
`
`browse hierarchy that instead establish respective logical groupings, in turn have
`
`one or more child nodes, each representative of some further constraint defined
`
`subset portion of the subset of the items that are logically grouped.
`
`Claim 26: (proposed substitute for original claim 3) The system, including the
`
`browse hierarchy, of claim [[1]] 24 wherein the scope of the items represented by
`
`each browse activated one of the nodes is constrained by [[an]] the aggregation of
`
`any constraints specified by the particular browse activated node and all of its
`
`ancestors.
`
`Claim 27: (proposed substitute for original claim 5) The system, including the
`
`browse hierarchy, of claim [[4]] 26 wherein the aggregation of constraints
`
`comprises formulation of a search rule from which the application server derives
`
`and communicates to the database the executable query and thereby retrieves and
`
`
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`–3–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`returns a subset of catalog information that includes unique identifiers for all of the
`
`
`
`items stored in the database that meet the aggregation of constraints.
`
`Claim 28: (proposed substitute for original claim 6) The system, including the
`
`browse hierarchy, of claim [[5]] 27 wherein: a third portion of the nodes of the
`
`browse hierarchy are leaf nodes, each of the leaf nodes having no children; and
`
`said browse hierarchy operable in the system to, when used by the application
`
`server, determine the aggregation of constraints and operable to generate the search
`
`rule for each leaf node of the third portion in response to activation of the
`
`respective leaf node.
`
`Claim 29: (proposed substitute for original claim 11) A method of representing a
`
`plurality of items stored in a database hierarchically, each of the items associated
`
`with one or more attributes, each of the attributes having one or more values, said
`
`method comprising:
`
`apportioning the plurality of items stored in the database into subsets;
`
`representing each of the subsets with a node in a browse hierarchy, said
`
`browse hierarchy representing and specifying a hierarchically-defined organization
`
`of the plurality of items stored in the database, the nodes together specifying an
`
`aggregation of constraints and operative to, for a particular browse activated one of
`
`the nodes, derive a query executable to return particular ones of the items stored in
`
`the database, each of the nodes being a child of one other node, except for a root
`
`
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`–4–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`one of the nodes, which is a child of no other one of the nodes and is an ancestor of
`
`
`
`all of the nodes in the browse hierarchy;
`
`specifying one or more of the constraints for each node of a first portion of
`
`the nodes of the browse hierarchy, the constraints defining a scope of the
`
`corresponding subset of the items stored in the database represented by each node
`
`of the first portion relative to their respective parent node; and
`
`establishing a logical grouping of the items stored in the database for a
`
`second portion of the nodes of the browse hierarchy, the logical grouping defining
`
`a scope of the subset of items stored in the database represented by each respective
`
`node of the second portion of nodes, no constraints being specified for any of the
`
`second portion of the nodes.
`
`Claim 30: (proposed substitute for original claim 12) The method of claim [[11]]
`
`29 wherein the nodes of the second portion of the browse hierarchy that instead
`
`establish respective logical groupings, in turn have one or more child nodes, each
`
`representative of some further constraint defined subset portion of the subset of the
`
`items that are logically grouped.
`
`Claim 31: (proposed substitute for original claim 13) The method of claim [[11]]
`
`29 wherein the scope of the items represented by each browse activated one of the
`
`nodes is constrained by [[an]] the aggregation of any constraints specified by the
`
`particular browse activated node and all of its ancestors.
`
`
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`–5–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Claim 32: (proposed substitute for original claim 15) The method of claim [[14]]
`
`
`
`31 wherein the aggregation of constraints comprises formulation of a search rule
`
`from which the executable query is derived, wherein the search rule is
`
`communicated to the database, and wherein a subset of catalog information that
`
`includes unique identifiers for all of the items stored in the database that meet the
`
`aggregation of constraints is retrieved and returned.
`
`Claim 33: (proposed substitute for original claim 16) The method of claim [[15]]
`
`32 wherein: a third portion of the nodes of the browse hierarchy are leaf nodes,
`
`each of the leaf nodes having no children; and said browse hierarchy operable in
`
`the system to determine the aggregation of constraints and operable to generate the
`
`search rule for each leaf node of the third portion in response to activation of the
`
`respective leaf node.
`
`B.
`
`Support in the Original Disclosure for Proposed Claims
`(§ 42.221(b)(1)), Description of Changes and Claim Construction
`Per the Trial Guide’s suggested use of claim charts (see Part II, Section B.5,
`
`77 FR 48764), Patent Owner details disclosure support and describes changes.
`
`References are to App. 09/884,180 (Exh. 2005), now ‘282 Patent, supported by
`
`declaration testimony Dr. Scott Nettles, which identifies specific support and
`
`provided basis for construction of “browse hierarchy” as “an operative hierarchy
`
`that, in correspondence with browse-related activation of nodes thereof, specifies
`
`an organization imposed on items in a database” (Exh. 2004 at ¶¶54-77, 23-29) .
`
`
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`–6–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`1.
`Claim 24 (proposed substitute for original claim 1)
`Substitute Claim 24
`Support/Changes (S/C)
`Ref
`Support: Exh. 2005 at 6:16-20; 8:18-
`24a A system comprising:
`an application server;
`29; 9:1-6; 9:14-20; 9:23-29; 12:27-30;
`13:5-10; FIGs. 2, 3; Title. Changes:
`a browse hierarchy used by the
`application server for representing,
`revised preamble to emphasize that
`and specifying a hierarchically-
`claim falls within “machine” category
`defined organization of a plurality
`of patentable subject matter. Revised to
`of items stored in a database, said
`read as “browse hierarchy” and empha-
`browse hierarchy comprising:
`size operative nature of the hierarchy.
`See Exh. 2004 at ¶¶15-17, 25-29.
`Added new element “application
`server” and corresponding limitations
`to emphasize particular mechanism by
`which the “browse hierarchy” is used.
`Support: Exh. 2005 at 5:4-9; 8:27-9:6;
`9:14-16; 9:20-25; 11:30-12:30; 12:27-
`30; Exh. 2004 at 18; Exh. 2008.
`Changes: added limitation to clarify
`that nodes, as operative elements of the
`browse hierarchy, are stored in “non-
`transitory” storage (see Exh. 2008) and
`to emphasize use by the “application
`server.” Added textual limitation to
`emphasize operational “browse
`activated” use of the nodes of browse
`hierarchy in “deriv[ation of] a query
`executable to return particular ones of
`the items stored in the database.”
`Support: Exh. 2005 at 5:6-8; FIG. 3.
`Changes: clarified that root node is
`“one of the” nodes “of the browse
`hierarchy.”
`
`24b a plurality of nodes stored in non-
`transitory storage accessible to the
`application server and each
`representative of a subset of the
`items stored in the database, the
`nodes together specifying an
`aggregation of constraints and
`operative in the application server
`to, for a particular browse activated
`one of the nodes, derive a query
`executable to return particular ones
`of the items stored in the database;
`and wherein:
`
`24c
`
`each of the nodes is a child of one
`other node, except for a root one of
`the nodes, which is a child of no
`other one of the nodes and is an
`ancestor of all of the nodes of the
`browse hierarchy;
`24d a first portion of the nodes of the
`browse hierarchy that each specify
`one or more of the constraints
`defining a scope of the
`
`
`
`–7–
`
`Support: Exh. 2005 at 5:6-17; 7:9-14;
`8:2-8; 8:27-29; 10:5-26; and FIG. 3.
`Changes: clarified that the first portion
`of nodes are nodes of the browse
`
`

`

`
`
`
`
`Ref
`
`24e
`
`
`
`Ref
`25
`
`Ref
`26
`
`
`
`
`
`Substitute Claim 24
`corresponding subset of the items
`stored in the database represented
`by each node of the first portion
`relative to their respective parent
`node; and
`
`a second portion of the nodes of the
`browse hierarchy that specify no
`constraints, each of the nodes of
`the second portion instead
`establishing a logical grouping
`defining a scope of the subset of
`the items stored in the database
`represented by each respective
`node of the second portion.
`
`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Support/Changes (S/C)
`hierarchy. Added textual limitation to
`emphasize that the “one or more of the
`constraints” correspond to a “subset of
`the items stored in the database.”
`Revised “parent node” to read as
`“respective parent node” to align with
`features in the claim.
`Support: Exh. 2005 at 5:6-12; 11:7-16;
`11:19-29; and FIG. 3. Changes:
`clarified that the second portion of
`nodes are nodes of the browse
`hierarchy, but unlike the first portion
`nodes, “instead” establish a logical
`grouping defining scope of a subset of
`items “stored in the database.”
`
`2.
`Claim 25 (proposed substitute for original claim 2)
`Substitute Claim 25
`Support/Changes (S/C)
`Support: Exh. 2005 at 5:4-17; 7:6-29;
`The system, including the browse
`hierarchy, of claim 24 wherein the
`11:19-29; FIG. 3; Exh. 2004 at ¶32. .
`Changes: revised preamble for
`nodes of the second portion of the
`browse hierarchy that instead
`consistency with claim 24. Clarified
`establish respective logical
`that second portion of nodes “instead
`groupings, in turn have one or
`establish[es] respective logical
`more child nodes, each
`groupings.” Added textual limitation
`representative of some further
`that nodes of the second portion, in
`constraint defined subset portion of
`turn, have child nodes representative of
`the subset of the items that are
`some “further constraint defined subset
`logically grouped.
`portion” of the subset of the items that
`are logically grouped.”
`
`
`3.
`Claim 26 (proposed substitute for original claim 3)
`Substitute Claim 26
`Support/Changes (S/C)
`Support: Exh. 2005 at 5:20-30; 7:7-21;
`The system, including the browse
`hierarchy, of claim 24 wherein the
`7:31-8:5; 8:27-9:4; 10:14-17; Exh.
`
`–8–
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`

`

`
`
`
`
`Ref
`
`
`
`Ref
`27
`
`Substitute Claim 26
`scope of the items represented by
`each browse activated one of the
`nodes is constrained by the
`aggregation of any constraints
`specified by the particular browse
`activated node and all of its
`ancestors.
`
`
`
`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Support/Changes (S/C)
`2005 at 38. Changes: revised preamble
`for consistency with claim 24. Empha-
`sized operative nature of “browse acti-
`vated” node as “constrained by the
`aggregation of any constraints specified
`by the particular browse activated node
`and all of its ancestors.”
`
`4.
`Claim 27 (proposed substitute for original claim 5)
`Substitute Claim 27
`Support/Changes (S/C)
`Support: Exh. 2005 at 5:24-30; 6:21-
`The system, including the browse
`22; 8:27-9:8; and 9:23-27. Changes:
`hierarchy, of claim 26 wherein the
`aggregation of constraints
`revised preamble for consistency with
`comprises formulation of a search
`claims 24, 26. Added textual limita-
`rule from which the application
`tions that the aggregation of constraints
`server derives and communicates to
`includes operative feature of “formula-
`the database the executable query
`tion of” a search rule from which the
`and thereby retrieves and returns a
`application server derives and com-
`subset of catalog information that
`municates to the database the executa-
`includes unique identifiers for all
`ble query and thereby retrieves and re-
`of the items stored in the database
`turns a subset of catalog information a
`that meet the aggregation of
`subset of catalog information that in-
`constraints.
`cludes “unique identifiers for” all of the
`items stored in the database that meet
`the aggregation of constraints.
`
`5.
`Claim 28 (proposed substitute for original claim 6)
`Substitute Claim 28
`Support/Changes (S/C)
`Ref
`28a The system, including the browse
`Support: Exh. 2005 at 5:18-30 and
`FIG. 3. Changes: revised preamble for
`hierarchy, of claim 27 wherein: a
`third portion of the nodes of the
`consistency with claim 24. Clarified
`browse hierarchy are leaf nodes,
`that the third portion of the nodes are
`each of the leaf nodes having no
`nodes “of the browse hierarchy.”
`children; and
`said browse hierarchy operable in
`the system to, when used by the
`
`Support: Exh. 2005 at 55:18-30; 8:27-
`30; 9:1-6; 9:23-27; and 10:14-17.
`
`
`
`28b
`
`
`
`–9–
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`

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`
`Ref
`
`
`
`
`
`Substitute Claim 28
`application server, determine the
`aggregation of constraints and
`operable to generate the search rule
`for each leaf node of the third
`portion in response to activation of
`the respective leaf node.
`
`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Support/Changes (S/C)
`Changes: clarified that browse
`hierarchy is “used by application
`server” and “operable” to generate the
`search rule for each leaf node in
`response to activation of the
`“respective” leaf node.
`
`6.
`
`29b apportioning the plurality of items stored in the
`database into subsets;
`
`29c
`
`representing each of the subsets with a node in a
`browse hierarchy,
`
`Claim 29 (proposed substitute for original claim 11)
`Substitute Claim 29
`Support/Changes
`Ref
`29a A method of representing a plurality of items
`Support: Exh. 2005 at
`5:8-17; 6:16-18; 7:6-9;
`stored in a database hierarchically, each of the
`and 10:3-25. Changes:
`items associated with one or more attributes,
`each of the attributes having one or more values,
`clarified that plurality of
`said method comprising:
`items that are represented
`hierarchically are items
`“stored” in a database.
`Support: Exh. 2005 at
`5:4-17; 7:9-17; 11:19-29;
`17:cl.11: line 4; FIG. 3.
`Changes: clarified that
`items apportioned into
`subsets are items “stored
`in the database.”
`Support: Exh. 2005 at
`5:4-17; 8:27-30;
`and17:cl.11:line 4; Exh.
`2004 at ¶¶15-17, 25-29.
`Changes: See 24a.
`revised to emphasize
`operative “browse
`hierarchy.”
`See claim 24, element
`24a.
`
`29d
`
`29e
`
`
`
`said browse hierarchy representing and
`specifying a hierarchically-defined organization
`of the plurality of items stored in the database,
`the nodes together specifying an aggregation of
`constraints and operative to, for a particular
`
`See claim 24, element
`24b.
`
`–10–
`
`

`

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`
`
`
`Substitute Claim 29
`browse activated one of the nodes, derive a query
`executable to return particular ones of the items
`stored in the database,
`each of the nodes being a child of one other
`node, except for a root one of the nodes, which is
`a child of no other one of the nodes and is an
`ancestor of all of the nodes of the browse
`hierarchy;
`specifying one or more of the constraints for
`each node of a first portion of the nodes of the
`browse hierarchy, the constraints defining a
`scope of the corresponding subset of the items
`stored in the database represented by each node
`of the first portion relative to their respective
`parent node; and
`29h establishing a logical grouping of the items
`stored in the database for a second portion of the
`nodes of the browse hierarchy, the logical
`grouping defining a scope of the subset of items
`stored in the database represented by each
`respective node of the second portion of nodes,
`no constraints being specified for any of the
`second portion of the nodes.
`
`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Support/Changes
`
`See claim 24, element
`24c.
`
`See claim 24, element
`24d.
`
`See claim 24, element
`24e.
`
`S/C
`See
`claim 25.
`
`
`
`Ref
`
`29f
`
`29g
`
`
`
`Ref
`30
`
`Ref
`31
`
`
`
`7.
`
`Claim 30 (proposed substitute for original claim 12)
`Substitute Claim 30
`The method of claim 29 wherein the nodes of the second portion
`of the browse hierarchy that instead establish respective logical
`groupings, in turn have one or more child nodes, each
`representative of some further constraint defined subset portion of
`the subset of the items that are logically grouped.
`
`8.
`
`Claim 31 (proposed substitute for original claim 13)
`Substitute Claim 31
`The method of claim 29 wherein the scope of the items
`
`S/C
`See
`
`–11–
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`Ref
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Substitute Claim 31
`S/C
`represented by each browse activated one of the nodes is
`claim 26.
`constrained by the aggregation of any constraints specified by the
`particular browse activated node and all of its ancestors.
`
`9.
`
`S/C
`See
`claim 27.
`
`Claim 32 (proposed substitute for original claim 15)
`Substitute Claim 32
`Ref
`32 The method of claim 31 wherein the aggregation of constraints
`comprises formulation of a search rule from which the executable
`query is derived, wherein the search rule is communicated to the
`database, and wherein a subset of catalog information that includes
`unique identifiers for all of the items stored in the database that
`meet the aggregation of constraints is retrieved and returned.
`
`
`
`10. Claim 33 (proposed substitute for original claim 16)
`Substitute Claim 33
`Ref
`33a The method of claim 32 wherein: a third portion of the nodes of
`the browse hierarchy are leaf nodes, each of the leaf nodes having
`no children; and
`
`S/C
`See
`claim 28,
`element
`28a.
`See
`claim 28,
`element
`28b.
`
`33b
`
`said browse hierarchy operable in the system to determine the
`aggregation of constraints and operable to generate the search rule
`for each leaf node of the third portion in response to activation of
`the respective leaf node.
`
`
`III. Proposed Claims Overcome Ground Upon Which Trial Was Instituted
`
`The proposed claims overcome the sole ground upon which trial was insti-
`
`tuted. Specifically, Petitioner posits that claims 1-20 attempt to claim “the abstract
`
`idea of organizing product-related data to facilitate catalog browsing.” (Pet. at 25).
`
`The Board posits that claim 11 is “drawn to the abstract idea of representing a plu-
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`rality of items in a database hierarchically.” (Decision at 15). As explained by Dr.
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`–12–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`Nettles (Exh. 2004, ¶¶ 15-18, 30-34, 36-43, and 45-47), the proposed claims do not
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`
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`seek to monopolize any abstract idea posited in these proceedings. Rather, the
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`proposed claims add meaningful limitations (Exh. 2004, ¶¶ 17, 31-34, and 36-44)
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`that satisfy § 101 subject matter eligibility standards.
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`Dr. Nettles has opined as to level of skill in the art of one who would have
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`the capability of understanding the computational system and software engineering
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`principles of the ‘282 Patent (Exh. 2004 at ¶13). Dr. Nettles meets that level of
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`skill (see Exh. 2004 at ¶¶ 6-12) and has, after consideration of the specification,
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`detailed his understanding (see Exh. 2004 at ¶¶ 15-78).
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`Proposed claims require significantly more than the mere abstract idea of
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`organizing product-related data to facilitate catalog browsing or representing items
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`stored in a database hierarchically. Indeed, a particular set of computational
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`mechanisms and structural elements are recited by which (1) the browse hierarchy
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`imparts concrete organization on information stored in the database (Exh. 2004, ¶¶
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`43-44), and (2) nodes of the browse hierarchy provide an operative facility for the
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`search for, and retrieval of, relevant items from the database in the context of
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`systems and methods claimed (Exh. 2004, ¶¶ 36-42 and 46-48).
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`Certainly, “any claim can be stripped down, simplified, generalized, or para-
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`phrased to remove all of its concrete limitations, until at its core, something that
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`could be characterized as an abstract idea is revealed.” See Ultramercial v. Hulu,
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`–13–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`722 F.3d 1335, 1344 (Fed. Cir. 2013). However, if a claim “as a whole, includes
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`
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`meaningful limitations restricting it to an application, rather than merely an ab-
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`stract idea,” it is statutory subject matter. Id. Considering the proposed claims as a
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`whole, and considering the specific and meaningful features of the proposed claims
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`as explained by Dr. Nettles (Exh. 2004, ¶¶ 32-34), the proposed claims seek to pro-
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`tect a particular practical application of computational systems that use an opera-
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`tive browse hierarchy to impose an organization on data items stored in a database.
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`Like the claims found patent-eligible by the Federal Circuit in Ultramercial, the
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`proposed claims do not preempt a fundamental concept.
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`The proposed claims incorporate added or amended features that bound their
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`applicability to particular practical applications. The claims require particular
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`mechanisms for imposing a concrete organization on the information stored in the
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`database so as to provide tangible benefits that enable websites to flexibly define
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`and maintain an organization of data stored in the database to allow subsets of the
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`data items therein to be more easily accessed and retrieved in correspondence with
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`user browsing (Exh. 2004, ¶¶ 40-44). The browse hierarchy is an operative mecha-
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`nism that provides increased efficiency of browsing in a computer system. In par-
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`ticular, Dr. Nettles notes that the browse hierarchy is an operational feature used to
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`provide a highly flexible way in which to browse and retrieve relevant items stored
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`in the database. (Exh. 2004, ¶¶ 15, 25, 36-40). The browse hierarchy is a concrete,
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`–14–
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`Patent Owner’s Motion to Amend
`CBM2013-00017 (Patent 6,834,282)
`physical entity that provides increased efficiency in computer operations for
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`
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`browsing the database. (Exh. 2004, ¶¶ 40-42).
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`Further, the browse hierarchy includes two different types of nodes—a first
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`type of node having one or more constraints and a second type of node having no
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`constraints. As a result, a range of exploitations of the abstract idea of representing
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`items in a database hierarchically exists that employ one type of node, but not the
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`other. See Exh. 2004, ¶¶ 31-34, 54. Dr. Nettles also explains that the abstract idea
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`of representing items in a database hierarchically does not require any of the nodes
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`in the hierarchy to be operative to derive a query executable to return data stored in
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`the database. See Exh. 2004, ¶¶ 38-42. Accordingly, the proposed claims do not
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`preempt a fundamental concept.
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`Proposed claims cannot be performed in the human mind, or by a human
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`using a pen and paper. Exh. 2004, ¶¶ 52-53, 35, 45, 49. Finally, added features of
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`the proposed claims, along with the original features, are more than “insignificant
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`postsolution activity.” Instead, the recited features are integral to the solution
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`claimed. Exh. 2004, ¶¶ 49-50. As a result, proposed claims satisfy § 101 subject
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`matter eligibility and the Motion should be granted if contingencies are triggered.
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`Dated:_January 9, 2014_____
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`Respectfully submitted,
`
`/David W. OBrien/_____________
`David W. O’Brien
`Registration No. 40,107
`HAYNES AND BOONE, LLP
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`–15–
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