Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`DECLARATION OF PHILIP GREENSPUN, PH.D IN SUPPORT OF
`VOLUSION’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND (UNDER 37 C.F.R. § 1.68)
`
`VOLUSION EXHIBIT 1018
`Volusion v. Versata
`CBM2013-00017
`
`
`U.S. Patent No. 6,834,282
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`DECLARATION OF PHILIP GREENSPUN, PH.D IN SUPPORT OF
`VOLUSION’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND (UNDER 37 C.F.R. § 1.68)
`
`VOLUSION EXHIBIT 1018
`Volusion v. Versata
`CBM2013-00017
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`TABLE OF CONTENTS
`BACKGROUND .............................................................................................1
`
`RETENTION AND MATERIALS REVIEWED ...........................................6
`
`I.
`
`II.
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`III. GENERAL DISAGREEMENT ......................................................................7
`
`IV.
`
`V.
`
`LEVEL OF SKILL IN THE ART ...................................................................8
`
`SUBJECT OF THE PATENT .......................................................................10
`
`VI. CLAIM CONSTRUCTION ..........................................................................11
`
`VII. ANALYSIS OF PROPOSED SUBSTITUTE CLAIMS...............................21
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Dr. Nettles’ definition of the abstract idea is overly broad.................21
`
`Dr. Nettles’ recitation of limitations merely describes well-
`known, routine and conventional uses of a general purpose
`computer..............................................................................................22
`
`Intricate and detailed computer programming is not required by
`the substitute claims ............................................................................28
`
`Additional Limitations Added in the Substitute Claims Do Not ........29
`
`Alleged Support for the Proposed Substitute Claims..........................32
`
`i
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`Pursuant to 28 U.S.C. § 1746 and 37 C.F.R. § 1.68, I, Philip Greenspun, do
`
`hereby declare:
`
`I.
`
`1.
`
`BACKGROUND
`
`My name is Philip Greenspun. I am competent to make this
`
`declaration based on my personal knowledge.
`
`2.
`
`Attached as Exhibit 1023 is a copy of my curriculum vitae, which
`
`includes the publications I have authored in the previous 10 years, either listed
`
`directly or by reference to http://philip.greenspun.com.
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`3.
`
`In terms of my background and experiences that qualify me as an
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`expert in this case, I earned a Ph.D. in Computer Science from Massachusetts
`
`Institute of Technology in 1999.
`
`I also obtained a Bachelor of Science Degree in
`
`Mathematics from Massachusetts Institute of Technology in 1982 and a Master of
`
`Science Degree in Electrical Engineering and Computer Science from
`
`Massachusetts Institute of Technology in 1993.
`
`4.
`
`In 1999, I received a Ph.D. in Electrical Engineering and Computer
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`Science from the Massachusetts Institute of Technology. My thesis concerned the
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`engineering of large online Internet communities with a Web browser front-end
`
`and a relational database management system (RDBMS) containing site content
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`and user data.
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`5.
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`I have authored five computer science textbooks in total, including
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`Database Backed Web Sites (Macmillan), Software Engineering for Internet
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`Applications, and a SQL language tutorial.
`
`6.
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`I have served as an independent member of various advisory and
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`corporate boards, mostly for technology companies. For example, I joined the
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`corporate board of an MIT materials science spin-off in late 2005 during a
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`$550,000 seed capital phase. I stepped down when the company secured $10
`
`million in venture capital in mid-2007.
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`7.
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`I began working full-time as a computer programmer in 1978,
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`developing a database management system for the Pioneer Venus Orbiter at the
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`National Aeronautics and Space Administration’s Goddard Space Flight Center.
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`8.
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`I developed my first program using a relational database management
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`system in 1994. It was a Web interface to the Children’s Hospital Oracle RDBMS
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`version 6. This enabled doctors at the hospital to view patient clinical data using
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`any computer equipped with a Web browser.
`
`9.
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`In 1995, I led an effort by Hearst Corporation to set up an
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`infrastructure for Internet Applications across all of their newspaper, magazine,
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`radio, and television properties. This infrastructure included software for
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`managing users, shopping carts, electronic commerce, advertising, and user
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`tracking.
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`10. Between 1995 and 1997, I significantly expanded the photo.net online
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`community that I had started, in 1993, in order to help people teach each other to
`
`become better photographers. I began distributing the source code behind
`
`photo.net to other programmers as a free open-source toolkit, called “ArsDigita
`
`Community System.”
`
`11.
`
`In May 1997, Macmillan published my first textbook on Internet
`
`Application development, “Database Backed Web Sites.”
`
`12.
`
`In 1997, I started a company, ArsDigita, to provide support and
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`service for the free open-source toolkit. Between 1997 and the middle of 2000, I
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`managed the growth of ArsDigita to 80 people, almost all programmers, and $20
`
`million per year in annual revenue. This involved supervising dozens of software
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`development projects, nearly all of which were Internet Applications with a Web
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`front-end and an Oracle RDBMS back-end. Approximately one third of these
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`projects were related to electronic commerce, e.g., a front-end for a Levi Strauss
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`factory making custom-cut khaki pants, traditional catalog-shopping sites, a site
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`selling last-minute travel projects. In 1999, I supervised the packaging up of much
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`of our ecommerce-related code into the “ecommerce” module of the ArsDigita
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`Community System. As the founder, CEO, and chief technical employee of the
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`company, I personally developed functional specifications, SQL data models
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`(Structured Query Language, or “SQL”, is the standard programming language for
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`relational database management systems), and Web page flows that determined the
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`user experience.
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`13. Between 2000 and the present, I have done software development
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`projects for philip.greenspun.com and photo.net, two online services that are
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`implemented as relational database management Applications. In addition, I am
`
`currently developing a database-backed Web application that works in conjunction
`
`with Facebook to allow parents to produce electronic baby books.
`
`14.
`
`Separately from this commercial and public work, I have been
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`involved, as a part-time teacher within the Department of Electrical Engineering
`
`and Computer Science, educating students at MIT in how to develop Internet
`
`Applications with an RDBMS back-end. In the Spring of 1999, I taught 6.916,
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`Software Engineering of Innovative Web Services, with Professors Hal Abelson
`
`and Michael Dertouzos. In the Spring of 2002, this course was adopted into the
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`standard MIT curriculum as 6.171. I wrote 15 chapters of a new textbook for this
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`class, “Software Engineering for Internet Applications.” This book was published
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`on the Web at http://philip.greenspun.com/seia/ starting in 2002 and 2003 and also
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`in hardcopy from MIT Press in 2006. I am the sole author of a supplementary
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`textbook for the class, “SQL for Web Nerds”, a succinct SQL programming
`
`language tutorial available only on the Web at http://philip.greenspun.com/sql/.
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`15. Based at least on my education and experience, I consider myself to
`
`be an expert in software engineering, including the development of database-
`
`backed Internet Applications.
`
`16. Within the previous four years, I have testified, either at trial or by
`
`deposition, in the following cases:
`
` Jardin v. DATAllego, Inc. and Stuart Frost, Case 3:2008cv01462 in
`California Southern District Court (deposition and a tutorial delivered at a
`Markman hearing)
`
` Lear Corporation, et al., United States Bankruptcy Court, Southern
`District Of New York, Case No. 09-14326 (deposition and trial)
`
` Bouret et al v. Caribbean Aviation Maintenance Corp. et al, Puerto Rico
`District Court, Case No. 3:2009cv2034 (deposition and trial)
`
` The Rector and Visitors of the University of Virginia v. IDX Systems
`Corporation, Civil Case No. CL09-58, Circuit Court for the City of
`Charlottesville, Virginia (deposition)
`
` HealthGrades v. MDX, Case 11-CV-00520-PAB-BNB, US District Court,
`Colorado (deposition)
`
` Business Logic Holding Corporation v. Ibbotson Associates and
`Morningstar, Case 2009-CH-46687, Circuit Court of Cook County,
`Illinois (deposition)
`
` British Telecommunications plc. v. Google, Inc., CA 11-1249-LPS, US
`District Court, Delaware (deposition).
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`II.
`
`17.
`
`RETENTION AND MATERIALS REVIEWED
`
`I have been retained by Petitioner, Volusion, Inc. in connection with a
`
`Petition for Covered Business Method Review of U.S. Patent No. 6,834,282 (“the
`
`’282 Patent”).
`
`18.
`
`I am being compensated for my time in this matter at the rate of $475
`
`per hour. My opinion is objective, and my compensation is not dependent on the
`
`outcome of this proceeding.
`
`19.
`
`For purposes of this declaration, I have been asked to opine on the
`
`proposed substitute claims to U.S. Patent No. 6,834,282 set forth in Dr. Nettles’
`
`declaration and Patent Owner’s Motion to Amend, from the perspective of one of
`
`ordinary skill in the art prior to the ’282 Patent. This inquiry includes the
`
`evaluation of whether the proposed substitute claims include elements or
`
`technological features that were routine, conventional, or well-known prior to the
`
`’282 Patent.
`
`20.
`
`For purposes of this declaration, I have been asked to assume that the
`
`time of invention is the filing date of the application that led to the ’282 Patent.
`
`Thus, when I refer to a person of ordinary skill’s knowledge “prior to the ’282
`
`Patent” in this declaration, I am referring to the time prior to the filing date of the
`
`application that led to the ’282 Patent.
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`6
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`21.
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`In preparation of this declaration and forming the opinions expressed
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`U.S. Patent No. 6,834,282
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`below, I have considered:
`
`a. The ’282 Patent (Ex. 1001)
`
`b. The prosecution history of the ’282 Patent (Ex. 1011)
`
`c. The January 9, 2014 Declaration of Scott M. Nettles (Ex. 2003)
`
`(“Nettles Declaration”)
`
`d. The January 9, 2014 Declaration of Scott M. Nettles in Support of
`
`Patent Owner Motion to Amend (Ex. 2004)
`
`e. Volusion, Inc.’s Petition for Covered Business Method Review
`
`(Paper No. 1)
`
`f. “Patent Owner’s Response” (Paper No. 23)
`
`g. Decision on Institution (Paper No. 8)
`
`h. March 11, 2014 Deposition Testimony of Dr. Nettles
`
`i. Microsoft Computer Dictionary definition of hierarchy (Ex. 3001)
`
`III. GENERAL DISAGREEMENT
`
`22.
`
`I disagree with several statements in Nettles Declaration and Patent
`
`Owner’s Response. To the extent any of those statements are not explicitly
`
`addressed in this Declaration, my silence in no way implies agreement with any
`
`statement made by Patent Owner or Dr. Nettles.
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`IV. LEVEL OF SKILL IN THE ART
`
`23.
`
`I understand that, in determining the level of ordinary skill in the art,
`
`various factors are considered. These include, but are not limited to, (i) the
`
`educational level of the inventor; (ii) the type of problems encountered in the art;
`
`(iii) prior art solutions to those problems; (iv) rapidity with which innovations are
`
`made; (v) sophistication of the technology; and (vi) educational level of active
`
`workers in the field.
`
`24.
`
`In Paragraphs 13-14 of the Nettles Declaration, Dr. Nettles opines that
`
`the level of ordinary skill in the art applicable to the ’282 Patent is “a bachelor’s
`
`degree in Computer Science or Electrical and Computer Engineering; or equivalent
`
`industry experience as one designing web-centric database systems and
`
`programming relative website applications” (Ex. 2004, ¶¶ 13-14).
`
`25.
`
`I disagree with Dr. Nettles. First, the level of ordinary skill described
`
`by Dr. Nettles does not include any requirement that the person of ordinary skill be
`
`familiar with e-commerce websites. A person of ordinary skill must have some
`
`familiarity with the subject matter of the patents, and the ’282 Patent states that it
`
`is related to “on-line catalogues” and is directed to “facilitate[ing] e-commerce”
`
`(Ex. 1001 at 1:36-40, 1:46-51, 3:29-41).
`
`26.
`
`Second, the level described by Dr. Nettles states that experience with
`
`“web-centric database systems and programming relative website applications”
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`could suffice. This is not sufficient in my opinion due to the fact that many
`
`database-backed Web sites or “website applications” have nothing to do with
`
`catalog shopping or e-commerce.
`
`27. An example of where this level of experience is inadequate for
`
`understanding the ’282 Patent is supplied by Dr. Nettles’ deposition (Ex. 1016 at p.
`
`139) where Dr. Nettles does not know that “IIS” in Figure 2 of the ’282 Patent
`
`stands for “Microsoft Internet Information Server,” the second most popular Web
`
`server at the time the patent was filed, and the most common HTTP server
`
`companion for Microsoft’s SQL Server RDBMS, which is described in the ’282
`
`Patent at 5:62. A second example is Dr. Nettles’ testimony that certain
`
`straightforward Web development tasks could not be completed as “a class
`
`assignment” (Ex. 1016 at 195). From my personal experience as a novice
`
`ecommerce site developer and also my experience supervising junior Web
`
`developers and teaching an undergraduate Web/ecommerce site development
`
`course, I know that straightforward web development tasks can completed in a few
`
`hours by beginners.
`
`28.
`
`It is my opinion that the level of ordinary skill in the art needed to
`
`understand the technology pertinent to the subject matter of the ’282 Patent at the
`
`time of invention is at least a bachelor’s degree in Computer Science or an
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`equivalent field (or equivalent industry experience) and at least one year of
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`experience designing and implementing database-backed e-commerce websites.
`
`29.
`
`V.
`
`30.
`
`I believe that I meet the level of ordinary skill in the art.
`
`SUBJECT OF THE PATENT
`
`Section III of the Nettles Declaration includes a high level description
`
`of the ’282 Patent. I disagree with the opinions described in this section because
`
`Dr. Nettles uses the description of a preferred embodiment of the ’282 Patent to
`
`describe what he believes to be the scope of the ’282 Patent (see Ex. 2004, ¶¶15-
`
`28). The alleged invention, however, was not limited to the preferred embodiment.
`
`31.
`
`Further, Dr. Nettles provides several opinions regarding the “specific
`
`computational system mechanism” described in the ’282 Patent. As I will describe
`
`in more detail below, the proposed substitute claims simply add technological
`
`features that were routine, conventional, or well-known prior to the ’282 Patent
`
`and thus do not meaningfully limit the claims.
`
`32.
`
`Further, Dr. Nettles appears to rely heavily on a distinction between
`
`logical and constraint-based nodes. The distinction between the nodes, however, is
`
`not as clear as Dr. Nettles seems to portray. The ’282 Patent describes that a
`
`constraint-based node is a node that represents a set of items defined by a
`
`constraint (e.g. Product Type = PC) (see, e.g., Ex. 1001 at Abstract). The ’282
`
`Patent describes that the other set of nodes represents a logical grouping of items
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`“that cannot be specified by one or more constraints” (id.). For example, a system
`
`may collect a set of items into “Clearance” (Ex. 1001 at 9:34-44). The items
`
`identified by this group could be represented by “specif[ying] the SKUs outright
`
`for those PCs and those software programs that have been placed on clearance”
`
`(id.). From an abstract perspective, there is a distinction between a constraint-
`
`based and logical node. However, from a computer implementation standpoint, a
`
`list of SKUs (e.g., SKU = 1001 OR 1002 OR 1003) will be used as a constraint in a
`
`query. Thus, when implemented, the distinction between the two types of nodes is
`
`not clear. For example, using the popular SQL language that is standard for the
`
`relational database management system (RDBMS), queries of both types would be
`
`accomplished with a SELECT … WHERE statement.
`
`VI. LEGAL PRINCIPLES
`
`a. Broadest Reasonable Interpretation
`
`33.
`
`I understand that, for purposes of this proceeding, claims must be
`
`given their broadest reasonable interpretation in light of the specification as it
`
`would be interpreted by one of ordinary skill in the art. Stated another way, the
`
`words in the claim get their broadest reasonable meaning in their ordinary usage as
`
`understood by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by the
`
`written description contained in the applicant’s specification.
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`34.
`
`I further understand that when construing a means-plus-function
`
`limitation, one first must identify the claimed function, and then look to the
`
`specification to identify the corresponding structure that performs the claimed
`
`function. With respect to the second step, the structure disclosed in the
`
`specification is the corresponding structure only if the specification or prosecution
`
`history clearly links or associates that structure to the function recited in the claim.
`
`b. Patentability Under Section 101
`
`35.
`
`I understand that abstract ideas are not patentable under 35 U.S.C.
`
`§ 101.
`
`36.
`
`I also understand that a method that consists of steps that can be
`
`performed in the human mind, or by a human using a pen and paper, is not patent
`
`eligible.
`
`37.
`
`I also understand that it is not the breadth or narrowness of the
`
`abstract idea that is relevant, but whether the claim covers every practical
`
`application of that abstract idea.
`
`38.
`
`I understand that if a claim preempts the abstract idea in its entirety,
`
`the claim is not patentable.
`
`39.
`
`I also understand that even if a claim does not wholly preempt an
`
`abstract idea, it still will not be limited meaningfully if it contains only
`
`insignificant or token pre-or post-solution activity—such as identifying a relevant
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`audience, a category of use, field of use, or technological environment. For
`
`example, insignificant data-gathering steps or post-solution output do not
`
`meaningfully limit a claim otherwise directed to an abstract idea. Likewise,
`
`limiting the claims to an application in a particular field, such as the oil-refining
`
`industry, is not a meaningful limitation.
`
`40.
`
`Further, I understand that limitations that represent a human
`
`contribution but are merely tangential, routine, well-understood, or conventional,
`
`or in practice fail to narrow the claim relative to the fundamental principle therein,
`
`cannot confer patent eligibility.
`
`41.
`
`I also understand that adding abstraction to a basic abstract idea does
`
`nothing to make the basic abstract idea less abstract.
`
`42.
`
`I also understand that implementing an abstract idea on a general
`
`purpose computer is not a sufficiently meaningful limitation.
`
`43.
`
`I further understand that the complexity of the implementing software
`
`or the level of detail in the specification does not transform a claim reciting only an
`
`abstract concept into a patent-eligible system or method.
`
`c. Motions to Amend
`
`44.
`
`I understand that a Patent Owner moving to amend its claims bears the
`
`burden of showing that those proposed claims are patentable.
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`45. A motion to amend may be denied where the amendment does not
`
`respond to a ground of unpatentability involved in the trial. I understand the
`
`ground of patentability involved in this proceeding is patentability under Section
`
`101.
`
`46.
`
`I also understand that a motion to amend may be denied where the
`
`amendment seeks to enlarge the scope of the claims of the patent or introduce new
`
`subject matter.
`
`47.
`
`I understand that a motion to amend must include a claim listing
`
`which shows the changes clearly and sets forth the support in the original
`
`disclosure of the patent for each claim that is added or amended.
`
`48. A motion to amend must also show the support in an earlier-filed
`
`disclosure for each claim for which the benefit of the filing date of the earlier filed
`
`disclosure is sought.
`
`49.
`
`I understand that the Patent Owner should identify specifically the
`
`feature or features added to each substitute claim, as compared to the challenged
`
`claim it replaces, and come forward with technical facts and reasoning about those
`
`features.
`
`VII. CLAIM CONSTRUCTION
`
`50. Dr. Nettles opines that a person of ordinary skill in the art would
`
`understand that “a browse hierarchy, or hierarchy, at least as such terms are used
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`in connection with constituent nodes that specify constraints and logical groupings
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`to mean ‘an operative hierarchy that, in correspondence with browse-related
`
`activation of nodes thereof, specifies an organization imposed on items in a
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`database’” (Ex. 2004, ¶ 28).
`
`51.
`
`I agree with Dr. Nettles that the terms “hierarchy” and “browse
`
`hierarchy” in the context of the ‘282 Patent, are interchangeable, but I disagree
`
`with Dr. Nettles’ construction of those terms.
`
`52. A person of ordinary skill in the art would use the term “hierarchy”
`
`according to its plain and ordinary meaning, and there is nothing in the
`
`specification of the ’282 Patent that defines hierarchy otherwise.
`
`53.
`
`The ’282 Patent states:
`
`A hierarchy typically attempts to classify and/or categorize
`catalog items starting with relatively general levels of
`specificity, and gradually becomes more specific based on
`values of particular attributes associated with the items. Such a
`hierarchy can be thought of as a simple tree structure, with
`higher-order nodes representing more general classifications for
`the items, and lower-order nodes (i.e. the children of the more
`general nodes) representing a narrowing of the scope of items
`that occupy the lower levels of the hierarchy.
`
`(Ex. 1001 at 2:7-15).
`
`54.
`
`This description of a hierarchy is consistent with the typical definition
`
`of “hierarchy.” For example, the Microsoft Computer Dictionary cited by the
`
`Board defines hierarchy as:
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`A type of organization that, like a tree, branches into more
`specific units, each of which is “owned” by the higher-level
`unit immediately above. Hierarchies are characteristic of
`several aspects of computing because they provide
`organizational frameworks that can reflect logical links, or
`relationships, between separate records, files, or pieces of
`equipment. For example, hierarchies are used in organizing
`related files on a disk, related records in a database, and related
`(interconnected) devices on a network. In applications such as
`spreadsheets, hierarchies of a sort are used to establish the order
`of precedence in which arithmetic operations are to be
`performed by the computer. See also hierarchical file system.
`
`(Ex. 3001).
`
`55. A person of ordinary skill in the art would thus understand
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`“hierarchy” to be a type of organization that, like a tree, branches into more
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`specific units, each of which is owned by the higher-level unit immediately above.
`
`56.
`
`The term “browse hierarchy” should have the same meaning.
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`Specifically, the term “browse” is used in the ’282 Patent to describe a user
`
`following a path through a hierarchy (Ex. 1001 at 3:25-35). Since a user could
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`follow the path through any hierarchy, the term “browse hierarchy” should have
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`the same meaning as a “hierarchy” in the context of the ’282 Patent.
`
`57. Dr. Nettles’ proposed construction is also circular and too narrow.
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`The construction is circular because it requires the “browse hierarchy” to be an
`
`“operative hierarchy.” Because Dr. Nettles and I agree that hierarchy and browse
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`hierarchy should have the same meaning in the context of the ’282 Patent, the use
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`of the term “hierarchy” to define a “browse hierarchy” is circular.
`
`58.
`
`Further, Dr. Nettles unnecessarily limits the term “browse hierarchy”
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`to an “operative” hierarchy. An “operative hierarchy” is not a term of art, and it is
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`unclear what the scope of such a term would be. It appears that Dr. Nettles is using
`
`the term “operative” to imply that the structure is functional.
`
`59.
`
`Traditionally, data structures in computer systems are typically not
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`operative or functional. Rather, a data structure is just way of storing and
`
`organizing related information in a computer’s memory. Examples of this type of
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`data structure include arrays, lists, trees, hash tables, and multi-field records.
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`These data structures can be manipulated or used by software procedures that are
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`part of the larger system but are not defined with the data structure itself.
`
`60. A person of ordinary skill in the art would understand that the only
`
`data structures that could be considered to be operative are “objects” in object-
`
`oriented systems. An object is an instance of a class created using an object-
`
`oriented computer language such as Java or C++, and it encapsulates information
`
`such that the information can be manipulated only by procedures that are defined
`
`methods of the object’s class. Thus a computer program cannot simply update the
`
`value of a variable stored within an object but must send a message to that object
`
`asking it to update the variable. It is the ability to receive these messages that
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`makes an object in an object-oriented language an “operative hierarchy.” The ’282
`
`Patent, however, does not suggest or discuss the use of object-oriented systems in
`
`any detail and certainly does not limit the invention to the use of objects in an
`
`object-oriented system.
`
`61.
`
`Further, a person of ordinary skill in the art would not understand that
`
`the plain and ordinary meaning of the term “browse hierarchy” in the ’282 Patent
`
`requires “an operative hierarchy that, in correspondence with browse-related
`
`activation of nodes thereof, specifies an organization imposed on items in a
`
`database.”
`
`62.
`
`First, a browse hierarchy does not “specify an organization imposed
`
`on items in a database.” The ’282 Patent describes that the hierarchy is
`
`representative of a set of items in a database (Ex. 1001 at 3:44-45(“The invention
`
`is a hierarchy for representing a plurality of catalog items stored in a catalog
`
`database.”)).
`
`63.
`
`The hierarchy of the ’282 Patent is thus separate from the database
`
`and cannot impose an organization on that database. This conclusion is consistent
`
`with the specification which allows multiple hierarchical representations of the
`
`same set of items in the database (Ex. 1001 at Abstract, 3:29-36). Dr. Nettles
`
`appears to agree with this conclusion as he opined that the organization required by
`
`the hierarchy “may be different from the actual database” and thus “enables the
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`user to browse the database through different navigational paths depending on the
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`concrete organization” (Ex. 2004, ¶43).
`
`64. As further support for the premise that the ’282 Patent does not
`
`impose an organization on the database itself, the ’282 Patent describes that there
`
`are certain disadvantages of using a “hierarchically arranged database[s]” and
`
`discloses a trend of moving away from such a design (Ex. 1001 at 3:9-32). The
`
`’282 Patent thus does not require the use of a hierarchical database management
`
`system and in fact suggests the use of a relational database management system,
`
`such as Microsoft SQL Server (Ex. 1001 at 5:62). In a relational database
`
`management system (RDBMS), programmers do not control the physical
`
`organization of the data. Instead, the programmers define logical structures that
`
`the relational database management system interprets and organizes for physical
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`storage.
`
`65.
`
`Second, Dr. Nettles’ construction requires that the operative
`
`hierarchy “in correspondence with browse-related activation of nodes” specify this
`
`organization. “Browse-related activation of nodes” is not a term of art.
`
`66.
`
`It appears that Dr. Nettles interprets “browse-related activation of
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`nodes” to refer to the user selecting a node for the purpose of navigating a
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`hierarchy, e.g., clicking a mouse on a web page hyperlink (Ex. 2003 at ¶¶ 15-17).
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`67. A “hierarchy” itself does not require that a user navigate the
`
`hierarchy, and the activation or selection of a node in that hierarchy does not
`
`specify an organization in the database. As described above, the database and
`
`hierarchy are separate and distinct. The ’282 Patent describes that when a node is
`
`selected, a query may be generated to retrieve information from a database, but it
`
`does not disclose that the data or organization of the database would be updated
`
`based on the selection of a node (Ex. 1001 at 3:65-4:17).
`
`68.
`
`In support of his opinion, Dr. Nettles cites to the statement in the
`
`specification that “[t]he present invention relates to browsing on-line catalogs and
`
`web sites, and more specifically to a flexible and arbitrarily rules-based browsing
`
`hierarchy for on-line catalogs and web sites” (Ex. 2003, ¶ 27 (citing Ex. 1001 at
`
`1:36-40)). A person of ordinary skill in the art would not understand that this
`
`statement requires that the hierarchy be operative. The “flexible and arbitrarily
`
`rules-based browsing hierarchy” refers to the fact that the hierarchy can have two
`
`types of nodes (constraint based and logical), not that the hierarchy must be
`
`dynamically browsed using a computer.
`
`69. Dr. Nettles also cites statements from column 6, but column 6
`
`describes only an embodiment of the invention (Ex. 1001 at 5:56-6:63).
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`VIII. ANALYSIS OF PROPOSED SUBSTITUTE CLAIMS
`
`70. Dr. Nettles opines that the proposed substitute claims include
`
`meaningful limitations (see, e.g., Ex. 2004, ¶31).
`
`71.
`
`I disagree with Dr. Nettles for two reasons. First, Dr. Nettles’ analysis
`
`is premised on a description of the abstract idea that is far broader than the scope
`
`of the abstract idea described by the Board and Petitioners. As a result, the
`
`“alternatives” described by Dr. Nettles relate to systems that do not apply the
`
`abstract idea embraced by the claims of the ’282 Patent and are irrelevant.
`
`72.
`
`Second, all of the limitations identified by Dr. Nettles were well-
`
`known, routine, and conventional prior to the ’282 Patent and thus are not
`
`meaningful limitations. Notably, Dr. Nettles analysis does not include any
`
`opinions regarding whether the limitations added to the substitute claims are
`
`something more than insignificant pre- or post-solution activity, i.e. not
`
`conventional or routine.
`
`73.
`
`The following contains additional detail regarding my opinions related
`
`to the two points that I just described.
`
`A.
`
`Dr. Nettles’ definition of the abstract idea is overly broad
`
`74. Dr. Nettles opines that the proposed substitute claims do not “preempt
`
`or completely monopolize an abstract idea of organizing product-related data to
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`facilitate catalog browsing or an abstract idea of representing a plurality of items in
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`a database hierarchically” (Ex. 2004, ¶¶ 31-34).
`
`75.
`
`The abstract idea of the claims includes at least the following: (1)
`
`organizing product-related data to facilitate catalog browsing by representing a
`
`plurality of items in a database hierarchically and (2) an organization that uses
`
`logical and constraint based representations of the items.
`
`76.
`
`In paragraphs 31-34, Dr. Nettles opines that there are practical
`
`alternatives to the proposed claims that do not use both the logical and constraint-
`
`based representations. Because the abstract idea of the claims necessitates the use
`
`of both types of representations, the implementations discussed by Dr. Nettles do
`
`not actually apply the abstract idea that is relevant to the claims of the ’282 Pate
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