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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`VOLUSION, INC.
`Petitioner
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`v.
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`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
`
`AND
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`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
`
`Case CBM2013-00017
`Patent 6,834,282)
`_____________________
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`
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`VERSATA’S PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.220
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`TABLE OF CONTENTS
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`V. 
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`INTRODUCTION ............................................................................................ 1 
`I. 
`SIMPLIFICATION OF ISSSUES; MOTION TO AMEND .......................... 1 
`II. 
`III.  PETITIONER’S BURDEN .............................................................................. 2 
`IV.  U.S. PATENT 6,834,282 .................................................................................. 2 
`A.  Overview ....................................................................................................... 2 
`B.  Claim Construction ........................................................................................ 8 
`1.  Hierarchy ............................................................................................... 8 
`C.  Status of Claims ........................................................................................... 11 
`1.  Patent Owner Has (Separately) Filed Motion to Amend to Address
`Issue Raised Sua Sponte by the Board; Accordingly Claims 1-10
`Are Not Separately Argued Here ........................................................ 11 
`2.  Statutory Process Claims 11-20 are Argued Here; Amendments are
`(Separately and Contingently) Sought in Motion to Amend .............. 12 
`PETITION DOES NOT ESTABLISH THAT CLAIMS ARE
`UNPATENTABLY ABSTRACT ................................................................. 12 
`A.  Petitioner Has Developed No Factual Record that Would Support a
`Conclusion that Claims Are Unpatentably Abstract ................................... 12 
`B.  The Claims Do Not “Preempt” any Abstract Idea ...................................... 15 
`1.  Claim 11 Recites a Statutory Process, Not an Abstract Idea .............. 17 
`2.  Claim 13, 14 and 15 Recite Statutory Processes, Not Abstract Ideas. 25 
`3.  Claim 16 Recites a Statutory Process, Not an Abstract Idea .............. 28 
`C.  Method Claims Are Incapable of being Performed in the Human Mind
`or Using Pen and Paper ............................................................................... 29 
`VI.  CONCLUSION .............................................................................................. 31 
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`TABLE OF AUTHORITIES
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`Cases 
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) .......................... 3
`In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) ......................................................... 11
`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) 13, 15,
`16
`Research Corp. Techs. v. Microsoft Corp., 627 F.3d 868 (Fed. Cir. 2010) ..... 13, 16
`SiRF Tech., Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010) ................................. 13, 17
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013) . 13, 14, 15, 16, 17
`Statutes 
`35 U.S.C. § 326(e) .............................................................................................. 2, 14
`35 U.S.C. §101 ........................................................................................................... 1
`Rules 
`37 CFR § 42.1(b) ..................................................................................................... 11
`37 CFR § 42.1(d) ....................................................................................................... 2
`37 CFR § 42.220(a) .................................................................................................. 17
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`I.
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`INTRODUCTION
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
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`The claims of U.S. Patent 6,834,282 (“the ’282 Patent”) recite patent eligible
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`subject matter. Claims 1-20 are in issue in the present Covered Business Method
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`Patent Review. In its Petition, Petitioner alleged that claims 1-23 were directed to
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`an unpatentable abstract idea. The Board denied institution as to claims 21-23;
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`however, it did institute trial as to claims 1-20, solely on grounds under 35 U.S.C.
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`§ 101.1 This Response, together with a Motion to Amend filed herewith, address
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`all grounds on which the trial has been instituted.
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`II.
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`SIMPLIFICATION OF ISSSUES; MOTION TO AMEND
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`In addition to the present Response, Patent Owner files herewith a Motion to
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`Amend. In that Motion to Amend, Patent Owner proposes four (4) substitute
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`claims 24-28 for respective, individual ones of the first ten (10) claims of the ’282
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`Patent. In addition, and contingent upon a Board determination that original claim
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`11-13, 15 or 16 of the ’282 is invalid on § 101 grounds, proposes one-for-one
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`1 In its Preliminary Response (Paper No. 6), Patent Owner argued that Section 101
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`is not a "condition of patentability" as required by 35 U.S.C. §§ 321(b) and 282(b)
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`and Part II of Title 35 U.S.C., and therefore cannot serve as a basis for review
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`under the Transitional Program for Covered Business Method Patent Review.
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`Patent Owner maintains its earlier position and reserves the right to raise this issue
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`in any later appeal or related proceeding.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`substitute claims 29-33. Specifically, substitute claim 29 is contingent on adverse
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`decision as to claim 11; claim 30 as to claim 12; claim 31 as to claim 13; claim 32
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`as to claim 15; and claim 33 as to claim 16. Patent Owner’s Motion to Amend is
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`(1) filed after conferring with the Board and no later than the filing of this
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`Response, (2) responsive to the sole ground of unpatentability (§ 101) authorized
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`in this proceeding, (3) does not seek to enlarge the scope of the claims of the patent
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`or introduce new subject matter and (4) proposes a reasonable number of one-for-
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`one substitutes.
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`III. PETITIONER’S BURDEN
`35 U.S.C. § 326(e) states “[i]n a post-grant review instituted under this
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`chapter, the petitioner shall have the burden of proving a proposition of
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`unpatentability by a preponderance of the evidence.” See also 37 CFR § 42.1(d).
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`IV. U.S. PATENT 6,834,282
`A. Overview
`The ‘282 Patent describes computational system mechanisms that allow a
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`computer system, e.g., a webserver and related information systems, to define in a
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`flexible, expressive and (most importantly) operative way, an organization that is
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`computationally imposed upon data items that are stored in a database so as to
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`facilitate presentation to users, e.g., to human users browsing content served by a
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`website, of content sourced from relevant subsets of the items in the database in
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`correspondence with a user’s browse through the presentation. The mechanisms
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`include the use of constraint-specifying nodes in an operative hierarchy and the
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`use of non-constraint nodes that instead establish (again in the operative
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`hierarchy) logical groupings of the items stored in the database. Dr. Nettles
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`confirms this description (Exh. 2003 at ¶¶15-17) and further explains how this
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`operative hierarchy is used in correspondence with (i) a user browse, (ii) activation
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`of corresponding nodes of the operative hierarchy and (iii) an aggregation of
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`constraints expressed in the parentage of an activated node, to allow the computer
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`system to derive an appropriate query that is executable to return particular items
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`from the database. Exh. 2003 at ¶¶15-17.
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`In its rush to (mis)characterize the ‘282 Patent’s operative hierarchy as mere
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`abstraction, Petitioner has, in effect, disconnected the terms “hierarchy” and
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`“node” from the very specification context which must necessarily define their
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`proper construction (whether as per Phillips in district court, or using the broadest
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`reasonable interpretation in light of the specification standard applied by the Board
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`in these proceedings). As the Board has itself stated, “[t]he claim language should
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`be read in light of the specification as it would be interpreted by one of ordinary
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`skill in the art.” Institution Decision, CBM2013-00017, paper 8, at 9 (citing In re
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`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`In his Declaration, Dr. Nettles has opined as to level of skill in the art of one
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`who would have the capability of understanding the computational system and
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`software engineering principles of the ‘282 Patent (Exh. 2003 at ¶13) and who
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`would therefore, consistent with the Board’s guidance, be qualified to inform claim
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`construction with a reading of the claim language in light of the specification. Dr.
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`Nettles meets that level of skill (see Exh. 2003 at ¶¶ 1-12 and 14) and has, after
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`consideration of the specification, detailed his understanding (see Exh. 2003 at ¶¶
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`15-56), which is summarized below.
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`Specifically, in a demonstrative (which for ease of reference by the Board is
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`included in-line below, but also appears as a full-size exhibit, Exh. 2007), Dr.
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`Nettles has annotated FIG. 3 of the ‘282 Patent to explain the computational
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`system mechanisms employed in systems and methods described in the ‘282 Patent
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`relative to an “include rule” of constraints aggregated from the operative hierarchy
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`and relative to components of the described computational system. Dr. Nettles
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`explains the demonstrative in detail at Exh. 2003, ¶¶ 16-17, 19-21.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
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`To emphasize proper specification-anchored interpretation of the hierarchy,
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`nodes, constraints and logical groupings (all recited in the claims) relative to the
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`“items in the database” (also recited in the claims), Dr. Nettles has annotated to
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`identify browse activation of a particular node A in a hierarchy (i.e., the operative
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`hierarchy visually depicted in FIG. 3) in response to user browsing (e.g., of website
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`content presented at a user’s computer using a web browser). See Exh. 2003, ¶¶
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`16-17. Constraints specified at the browse activated node 152 of FIG. 3 (annotated
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`as “Browse Activated Node A”) and in the activated node’s parentage (e.g., nodes
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`151, 145 and 143 of FIG. 3, annotated as B, C and D) are aggregated in the form of
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`the include rule expressed and explained at col. 8, lines 20-45 of the ‘282 Patent
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`specification itself. Exh. 2003 at ¶¶ 16-17.
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`Thus, as explained by Dr. Nettles and, indeed, in the patent specification
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`itself, and based on the organization imposed by constraints specified within the
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`hierarchy, a rule defining all items that fall under the browse activated leaf node is
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`aggregated and expressed as follows:
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`‘282 Patent at 8:39-45; see also annotated include rule shown in the demonstrative;
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`Exh. 2003, ¶¶ 16-17, 43-44, 46, and 54.
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`As Dr. Nettles explains, for a node activated during the browse process (e.g.,
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`browse activated leaf node 152, annotated as A and illustrated above), the
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`application (executing on an application server) aggregates the constraints
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`specified by the node and all of its ancestors into a single include rule. Exh. 2003
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`at ¶¶ 16-17, 21, and 46. The application may then derive a database search query
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`from the include rule and communicates the derived query to the database.
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`Exh. 2003 at ¶¶ 29 and 44.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`These operative features are not at all abstract to a person of ordinary skill in
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`the art, as confirmed by Dr. Nettles. Exh. 2003 at ¶18. Neither are they amenable
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`to a mere mental steps or pen and paper implementation because to impose an
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`organization on data items actually stored in the database (or, as recited in the
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`method claim sets, to “apportion the data items [stored in the database] into
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`subsets” and “represent each of the [apportioned] subsets with a node” in the
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`operative hierarchy explained by Dr. Nettles), it is necessary to operatively interact
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`with the items actually stored in the database. Exh. 2003 at ¶¶ 50, 52.
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`Specifically, query formation by aggregation of node specified constraints (see
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`original method claims 16 and 13-15) into a search rule as explained above and in
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`the referenced portions of the Nettles declaration is an example of operative
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`interactions with the items actually stored in the database that cannot be performed
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`in the human mind or simply using pen and paper.
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`Petitioner seeks to characterize the Patent Owner’s inventions as nothing
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`more than the abstract idea of organizing product-related data to facilitate catalog
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`browsing. See Petition, CBM2013-00017, paper 1 at 21. Dr. Nettles has
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`considered this characterization (see Exh. 2003 at ¶¶ 14, 18-20, 25-32 and 56) in
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`light of the actual specification and as a person of ordinary skill in the art. Per the
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`Board’s own guidance, the ‘282 Patent specification necessarily informs proper
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`construction. Here the term “hierarchy” is particularly relevant as the term is used
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`(in the claims themselves as well as the specification) in an operative fashion in
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`connection with “nodes,” “constraints” and “logical groupings” and relative to the
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`“items in the database.” See Exh. 2003 at ¶¶ 15-31. In short, Dr. Nettles disagrees
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`with the characterization. Exh. 2003 at ¶¶ 31, 33. Instead, and as confirmed by
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`Dr. Nettles, the claims of the ‘282 Patent specify, from the perspective of a person
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`of ordinary skill, concrete and operative hierarchies together with methods that
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`impose meaningful limits on the range of systems that could be said to exploit the
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`abstract idea proposed by Petitioner. Exh. 2003 at ¶¶ 15-31, 35.
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`B. Claim Construction
`Aside from concurring generally in the appropriate standard, i.e., broadest
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`reasonable interpretation, as understood by a person of ordinary skill in the art and
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`consistent with the disclosure (see Petition at 20), Petitioner does not advocate a
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`particular construction of any claim terms. Notably, Petitioner does not provide
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`and, indeed, cannot later rely herein on any factual record (other than that provided
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`by the Board itself as Exh. 3001) to establish how any particular claim term would
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`be understood by a person of ordinary skill in the art.
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`1. Hierarchy
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`With respect to the factual record supplemented by the Board itself, sua
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`sponte, Patent Owner notes that the Microsoft® Computer Dictionary definition
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`that appears in the Decision on Institution:
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`hierarchy n. A type of organization that, like a tree, branches into
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`more specific units, each of which is “owned” by the higher-level unit
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`immediately above. Hierarchies are characteristic of several aspects
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`of computing because they provide organizational frameworks that
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`can reflect logical links, or relationships, between separate records,
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`files, or pieces of equipment. For example, hierarchies are used in
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`organizing related files on a disk, related records in a database, and
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`related (interconnected) devices on a network. In applications such as
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`spreadsheets, hierarchies of a sort are used to establish the order of
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`precedence in which arithmetic operations are to be performed by the
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`computer.
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`Institution Decision, paper 8 at 9-10 (relying on Exh. 3001) (emphasis added).
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`Because the recited dictionary definition embraces (though does not require)
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`functionally operative, data structure type usages of the term “hierarchy,” it is not
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`inconsistent with the foregoing specification-anchored interpretation of the term
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`“hierarchy.” However, Patent Owner certainly does not acquiesce in the Board’s
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`(apparent) expanded read of the term “hierarchy,” as encompassing mere
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`abstraction. Such an expanded read is simply not a proper, broad yet reasonable
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`construction in light of the specification. Specifically, such an expanded read is
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`not consistent with the factual record reviewed above and documented in the
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`Nettles declaration (Exh. 2003 at ¶¶ 25-31) in support of this Patent Owner
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`Response relative to how the term “hierarchy” should be construed in the context
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`of the ‘282 Patent.
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`Accordingly, Patent Owner specifically requests that, after consideration of
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`the factual record that, in addition to the ‘282 Patent itself, now includes
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`Exh. 2003, the Board adopt (for purposes of its adjudication on § 101 grounds
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`advanced by Petitioner and opposed by Patent Owner) the following claim
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`construction:
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`hierarchy is “an operative data structure that, in correspondence with
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`browse-related activation of nodes thereof, specifies an organization
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`imposed on items in a database.” See Exh. 2003 at ¶¶ 30, 25-31.
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`Dr. Nettles confirms that a person of ordinary skill in the art would interpret
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`the specification as dictating this “operative” construction of hierarchy. Exh. 2003
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`at ¶¶ 30-31. Dr. Nettles also confirms that an interpretation of “hierarchy” (as that
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`term is used in the claims of the ‘282 Patent) that encompasses abstract (e.g., pen
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`and paper) or merely conceptual representations of hierarchical relations is not
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`consistent with how a person of ordinary skill in the art would interpret the
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`specification. Exh. 2003 at ¶¶ 25-31, 52.
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`Leaving aside the propriety of the Board’s construction for purposes of
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`institution, to the extent that the going forward construction of hierarchy (for
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`–10–
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`purposes of adjudication) encompasses abstract or merely conceptual
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`representations of hierarchical relations, it is errant.
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`Status of Claims
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`C.
`Trial has been instituted as to claims 1-20.
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`1.
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`Patent Owner Has (Separately) Filed Motion to Amend to
`Address Issue Raised Sua Sponte by the Board; Accordingly
`Claims 1-10 Are Not Separately Argued Here
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`In its institution decision, the Board raised (again sua sponte) an issue as to
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`the express statutory category (process, machine, manufacture or composition of
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`matter) into which claims 1-10 might properly fall. See Institution Decision,
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`paper 8 at 13 (raising a potential Nuijten 2 issue not actually briefed by Petitioner).
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`Leaving aside (for) the propriety of the Boards examinatorial approach, and in an
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`effort to simplify issues in this adjudication, Patent Owner has, in its Motion to
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`Amend, proposed four (4) substitute claims 24-28 for respective, individual ones of
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`the first ten (10) claims of the ’282 Patent. The substitution provides claims in
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`which the originally claimed hierarchy (properly construed as operative) is recited
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`overtly in combination with other elements of a system in which the hierarchy has
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`been operatively described in the ‘282 Patent.
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`In recognition of the goals of just, speedy, and inexpensive adjudication (see
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`37 CFR § 42.1(b)), Patent Owner does not separately argue claims 1-10 in this
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`2 In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`Patent Owner Response. Instead, substantive treatment of the patent eligibility of
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`substitute claims as § 101 statutory machines appears in the Motion to Amend. For
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`avoidance of doubt, Patent Owner does not acquiesce in Petitioner’s grounds (as
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`applied on institution to claims 1-10) and, should the Board dismiss the Motion to
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`Amend, Patent Owner reserves the right to, consistent with the claim construction
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`advanced above and consistent with authorities relied otherwise upon herein, to
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`argue at trial in opposition to Petitioner’s grounds as applied on institution to
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`claims 1-10.
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`2.
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`Statutory Process Claims 11-20 are Argued Here;
`Amendments are (Separately and Contingently) Sought in
`Motion to Amend
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`The patent eligibility of original claims 11-20 as § 101 statutory processes is
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`argued here. One-for-one substitute claims are proposed in the Motion to Amend
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`contingent on an adverse decision by the Board as to claim 11, 12, 13, 15 or 16.
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`V.
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`PETITION DOES NOT ESTABLISH THAT CLAIMS ARE
`UNPATENTABLY ABSTRACT
`A.
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`Petitioner Has Developed No Factual Record that Would Support
`a Conclusion that Claims Are Unpatentably Abstract
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`Section 101 sets forth four patent eligible categories of subject matter: “any
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`new and useful process, machine, manufacture, or composition of matter.” 35
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`U.S.C. § 101. The Supreme Court has identified only “three specific exceptions to
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`§101’s broad patent-eligibility principles: laws of nature, physical phenomena,
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`and abstract ideas.” Research Corp. Techs., Inc., v. Microsoft Corp., 627 F.3d 859,
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`867 (Fed. Cir. 2010) .
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`In analyzing and synthesizing Supreme Court precedent, the Federal Circuit
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`recently noted that “a claim is not meaningfully limited if it merely describes an
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`abstract idea or simply adds ‘apply it.’” Ultramercial, 722 F.3d at 1345 (citing
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`Prometheus, 132 S.Ct. at 1297. We also know that, if a claim covers all practical
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`applications of an abstract idea, it is not meaningfully limited. Id. at 1346.
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`However, this form of pre-emption is only a subject matter eligibility problem
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`when a claim pre-empts all practical uses of an abstract idea. Id. (emphasis
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`added). In order for the addition of a machine to impose a meaningful limit on the
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`scope of a claim, it must play a significant part in permitting the claimed method to
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`be performed, rather than function solely as an obvious mechanism for permitting a
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`solution to be achieved more quickly. SiRF Tech., Inc. v. ITC, 601 F.3d 1319,
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`1333 (Fed. Cir. 2010).
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`The analysis under § 101, while ultimately a legal determination, is rife with
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`underlying factual issues. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339
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`(Fed. Cir. 2013). For example, while opinions of the Federal Circuit have used
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`varying formulations for the precise test, there is no doubt the § 101 inquiry
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`requires a search for limitations in the claims that narrow or tie the claims to
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`specific applications of an otherwise abstract concept. Id. (noting that factual
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`inquiries abound in the “meaningful limitations” inquiry); see also Id. (noting that
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`even factual inquiries may underlie other subject matter inquiries). Likewise, any
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`inquiry into the scope of preemption—how much of the field is “tied up” by the
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`claim—by definition will involve historic facts: identifying the “field,” the
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`available alternatives, and preemptive impact of the claims in that field. Id.
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`Almost by definition, analyzing whether something was “conventional” or
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`“routine” involves analyzing facts. Id.
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`Petitioner has the burden of proving a proposition of unpatentability. 35
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`U.S.C. § 326(e). However, in these proceedings, Petitioner’s has utterly failed to
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`establish any factual basis for its conclusory assertions that: claims of the ‘282
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`Patent are directed to “nothing more than abstract ideas—hierarchies and methods
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`of displaying them—without anything more than routine, conventional features”
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`(Petition at 6) or “the abstract idea of organizing product-related data to facilitate
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`catalog browsing” (Petition at 21) or no more than “the abstract idea of organizing
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`product-related data in a specific arrangement” (Petition at 22). That failure is
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`determinative where, as here, Patent Owner has clearly established a factual record
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`of meaningful limitations and of absence of preemptive impact relative to abstract
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`ideas that have been alleged by Petitioner and relative to which trial has been
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`instituted.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`Petitioner has not and, indeed, cannot carry its burden at trial. For at least
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`this reason, the Board should confirm patentability of all claims on which trial has
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`been instituted.
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`The Claims Do Not “Preempt” any Abstract Idea
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`B.
`As an initial proposition, claims can embrace an abstract idea and still be
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`patentable. See Ultramercial, 722 F.3d at 1343 (citing Mayo Collaborative Servs.
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`v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294 (2012). Instead, a claim is not
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`patent eligible only if, instead of claiming an application of an abstract idea, the
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`claim is instead to the abstract idea itself. Id. The inquiry is to determine on which
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`side of the line the claim falls: does the claim cover only an abstract idea, or
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`instead does the claim cover an application of an abstract idea? Id.
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`The Court has long-recognized that any claim can be stripped down,
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`simplified, generalized, or paraphrased to remove all of its concrete limitations,
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`until at its core, something that could be characterized as an abstract idea is
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`revealed. Neither a court, nor this Board, can go hunting for abstractions by
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`ignoring the concrete, palpable, tangible limitations of the invention as actually
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`recited in a properly construed claim. See Id. at 1344. The relevant inquiry is
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`whether a claim, as a whole, includes meaningful limitations restricting it to an
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`application, rather than merely an abstract idea. Id. (emphasis in original). Thus,
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`to determine which side of the line the claim falls, the “claim as a whole” must be
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`CBM2013-00017 (Patent 6,834,282)
`considered: if a claim “as a whole, includes meaningful limitations restricting it to
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`
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`an application, rather than merely an abstract idea,” it is statutory subject matter.
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`Id. at 1344; see also Diamond v. Diehr, 450 U.S. 175, 188 (1981).
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`Other authority also sheds light on the inquiry of subject matter patentability
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`under § 101. For example, the machine-or-transformation test, while a useful and
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`important clue, is not determinative of whether a process meets the patentable
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`subject matter requirement of section 101. Bilski, 130 S.Ct. at 3227. Further,
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`integral use of a machine or apparatus to achieve performance of a method weighs
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`toward eligibility, as compared to where the machine or apparatus is merely an
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`object on which the method operates. Cybersource v. Retail Decisions, 654 F.3d
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`1366 (Fed. Cir. 2011). Moreover, “inventions with specific applications or
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`improvements to technologies in the marketplace are not likely to be so abstract”
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`as to be ineligible for patent protection. Research Corp. Techs. v. Microsoft Corp.,
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`627 F.3d 868 (Fed. Cir. 2010).
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`In analyzing and synthesizing Supreme Court precedent, the Federal Circuit
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`recently noted that “a claim is not meaningfully limited if it merely describes an
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`abstract idea or simply adds ‘apply it.’” Ultramercial, 722 F.3d at 1345 (citing
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`Prometheus, 132 S.Ct. at 1297. We also know that, if a claim covers all practical
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`applications of an abstract idea, it is not meaningfully limited. Id. at 1346.
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`However, this form of pre-emption is only a subject matter eligibility problem
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`when a claim pre-empts all practical uses of an abstract idea. Id. (emphasis
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`
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`added). In order for the addition of a machine to impose a meaningful limit on the
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`scope of a claim, it must play a significant part in permitting the claimed method to
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`be performed, rather than function solely as an obvious mechanism for permitting a
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`solution to be achieved more quickly. SiRF Tech., Inc. v. ITC, 601 F.3d 1319,
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`1333 (Fed. Cir. 2010).
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`As noted above, the inquiry into whether a claim preempts “too much” often
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`requires claim construction and factual inquiries. See Id. Neither the claim
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`construction standard applied by the Board in these proceedings, nor the goals of
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`speedy and inexpensive resolution of proceedings obviates these requirements.
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`Patent Owner has construed the term “hierarchy” (see Claim Construction,
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`Section IV.B, above at 8-10) and provides record evidence to support that
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`construction. Although, in the posture of these proceedings, Patent Owner’s
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`response is filed “as an opposition” (see 37 CFR § 42.220(a)) to Petitioner’s
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`Petition, where (as here) Petitioner has provided no facts, construction or indeed
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`claim language-anchored argument, Patent Owner’s factual record is (in effect)
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`unopposed.
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`1.
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`Claim 11 Recites a Statutory Process, Not an Abstract Idea
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`Turning specifically to the claim language, claim 11 recites a specific
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`implementation of a method of using a hierarchy operative in a computer system.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`As noted above (see Claim Construction, Section IV.B at 9), the term, hierarchy,
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`as that term is used in connection with items in a database and constituent nodes
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`that specify constraints and logical groupings (all of which are positively recited in
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`claim 11) means “an operative data structure that, in correspondence with browse-
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`related activation of nodes thereof, specifies an organization imposed on items in
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`[the] database.” See Exh. 2003 at ¶30 (wherein Dr. Nettles confirms and factually
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`supports that construction).
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`The text of method claim 11 initially recites the steps of:
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`“apportioning a plurality of items into subsets;” and
`“representing each of the subsets with a node in a
`hierarchy, each of the nodes being a child of one
`other node, except for a root node, which is a
`child of no other of the nodes and is an ancestor
`of all of the nodes in the hierarchy.”
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`‘282 Patent, claim 11, 11:29-35.
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`The preamble requires that the “plurality of items” are “in [the] database.”
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`‘282 Patent, claim 11, 11:25-29. Thus, the “apportioning … into subsets” is a step
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`that is performed on the items in the database. The hierarchy, i.e., the “operative
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`data structure that, in correspondence with browse-related activation of nodes
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`thereof, specifies an organization imposed on items in [the] database” is used to
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`represent the subsets so apportioned. Specifically, and as recited in the portion of
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`
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`claim 11 duplicated above, each of the apportioned-into subsets of items in the
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`database is represented by a node in the hierarchy, i.e., in the operative data
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`structure is used to specify an organization imposed on items in the database.
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`Claim 11 goes on to specify, in further detail, how two particular kinds of
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`apportioned-into subsets are actually represented in the hierarchy, i.e., in the
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`operative data structure that specifies an organization imposed on the items in the
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`database. Specifically, the text of method claim 11 recites the further steps of:
`specifying one or more constraints for each of a first
`portion of the nodes, the constraints defining a
`scope of the subset of items represented by each
`of the first portion relative to their parent
`node; and
`establishing a logical grouping of the items for a
`second portion of the nodes, the logical grouping
`defining a scope of the subset of items
`represented by each of the second portion of
`nodes, no constraints being specified for any of
`the second portion of the nodes.
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`‘282 Patent, claim 11, 11:29-35.
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`Patent Owner’s Response
`CBM2013-00017 (Patent 6,834,282)
`Specifically, by way of the recited first portion of the nodes of the operative
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`data structure (i.e., “the hierarchy”), constraints are specified for each first portion
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`node in a manner that defines, for each such first portion node, the scope of an
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`apportioned-into subset of items in the da