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.
`
`PETITIONER VOLUSION, INC.’S
`OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`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.
`
`PETITIONER VOLUSION, INC.’S
`OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................. ii
`
`LIST OF EXHIBITS.............................................................................................. iii
`
`I.
`
`II.
`
`INTRODUCTION .........................................................................................1
`
`ARGUMENT..................................................................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Patent Owner’s Failure to Address Patentability Over the Prior
`Art is Fatal.............................................................................................2
`
`Patent Owner Fails to Show the Proposed Amendments are
`Responsive to the Instituted Grounds. ..................................................3
`
`Patent Owner Fails to Show Support in the Original Disclosure..........3
`
`Patent Owner Fails to Carry Its Burden on Claim Construction. .........5
`
`The Proposed Claims Are Not Directed to Patentable Subject
`Matter. ...................................................................................................8
`
`III. CONCLUSION ............................................................................................15
`
`i
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`TABLE OF AUTHORITIES
`
`Cases
`Accenture Global Servs, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) .......................................................................9
`
`Bancorp Servs., LLC v. Sun Life Ins. Co. of Can. (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) .......................................................................9
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, 2014 WL 574596 (P.T.A.B. Feb. 11, 2014) ..................6, 13
`
`Nichia Corp. v. Emcore Corp.,
`IPR2012-00005, Paper No. 27 (P.T.A.B. June 3, 2013) .................................4
`
`Other Authorities
`
`35 U.S.C. § 101......................................................................................................2, 8
`
`37 C.F.R. § 42.20 ............................................................................................. passim
`
`37 C.F.R. § 42.221 .................................................................................................3, 4
`
`37 CFR § 42.71 ..........................................................................................................3
`
`ii
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`LIST OF EXHIBITS
`
`Exhibit 1016:
`
`Transcript of the March 10, 2014 Deposition of Scott Nettles
`
`Exhibit 1017:
`
`Exhibit 1018:
`
`Exhibit 1019:
`
`Declaration of Philip Greenspun in Support of Petitioner’s
`Reply to Patent Owner Response
`
`Declaration of Philip Greenspun in Support of Petitioner’s
`Opposition to Motion to Amend
`
`Plaintiffs’ Proposed Claim Constructions, Versata Software,
`Inc., et al. v. Volusion, Inc., Civil Action No. 1:12-cv-893-SS
`(W.D. Tex.), served June 17, 2013
`
`Exhibit 1020:
`
`Greenspun Demonstrative A
`
`Exhibit 1021:
`
`Greenspun Demonstrative B
`
`Exhibit 1022:
`
`Greenspun Demonstrative C
`
`Exhibit 1023:
`
`Curriculum Vitae of Philip Greenspun
`
`iii
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`I.
`
`INTRODUCTION
`
`Patent Owner’s Motion to Amend is fatally deficient. Most notably, Patent
`
`Owner’s Motion is deficient because it fails to comply with the statutory and
`
`regulatory requirements for motions to amend and the Board’s explicit Order in
`
`Paper No. 19 in this proceeding. That Order made clear that to carry its burden of
`
`proof, Patent Owner was required to provide arguments and explanations of why
`
`the proposed amended claims are patentable over the prior art. Patent Owner not
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`only provided no such argument or explanation, it told the Board it refused to do
`
`so. The Motion to Amend should be denied for this reason alone.
`
`Further, Patent Owner fails to provide any meaningful analysis of how the
`
`cited portions of the original disclosure support the proposed claims or why the
`
`proposed amendments are responsive to the instituted grounds. Again, both are
`
`clearly required by the Rules. Moreover, in attempting to amend the claims of the
`
`’282 Patent, Patent Owner fails to provide even a single proposed construction for
`
`critical new claim terms, thus failing to provide the Board with adequate
`
`information to determine whether the Patent Owner has demonstrated patentability.
`
`Consequently, Patent Owner fails to carry its burden of demonstrating patentability
`
`as required by 37 C.F.R. § 42.20(c).
`
`Finally, even if Patent Owner had met all of the requirements necessary to
`
`amend the claims of the ’282 Patent (which it clearly has not), the claim
`
`1
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`U.S. Patent No. 6,834,282
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`amendments Patent Owner proposes fail to transform the claims of the ’282 Patent
`
`into claims that cover patentable subject matter under 35 U.S.C. § 101. Thus, the
`
`proposed claims do not overcome the grounds upon which trial was instituted in
`
`this proceeding. Patent Owner’s Motion to Amend should be denied.
`
`II.
`
`ARGUMENT
`
`A.
`
`Patent Owner’s Failure to Address Patentability Over the
`Prior Art is Fatal.
`
`In a motion to amend, the Patent Owner must show “a patentable distinction
`
`of each proposed substitute claim over the prior art known to the patent owner.”
`
`(37 C.F.R. § 42.20; Paper 19 at 4; Paper 24). In the proceeding, Patent Owner
`
`made clear in footnote one of its Motion to Amend that it purposefully refused to
`
`comply with the Board’s Order regarding submission of evidence of patentability
`
`over prior art:
`
`The Board’s Order entered December 20, 2013 (Paper No. 19)
`requires a separate showing of patentable distinction over prior art
`known to Patent Owner … As Patent Owner respectfully believes
`such a requirement is extra-statutory and extra-regulatory, the instant
`Motion does not include such a showing …
`
`Paper 22 at 1, n. 1. Patent Owner has provided no evidence that the proposed
`
`amended claims are patentable over all (or any) prior art known to Patent Owner,
`
`or even a statement to that effect. Nor may Patent Owner attempt to add in
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`additional arguments regarding patentability now – the rule on motions for
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`rehearing provide that a “request for rehearing does not toll times for taking
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`action.” 37 CFR § 42.71(d). Patent Owner’s Motion to Amend should be denied
`
`on this basis alone.
`
`B.
`
`Patent Owner Fails to Show the Proposed Amendments are
`Responsive to the Instituted Grounds.
`
`Patent Owner is required to explain how the proposed amendments are
`
`responsive to the instituted grounds. 37 C.F.R. § 42.221(a)(2)(i). Patent Owner’s
`
`Motion to Amend includes a short section purporting to explain why the proposed
`
`claims, as a whole, are responsive to the Section 101 challenge, but does not
`
`attempt to explain each proposed amendment and why it is responsive. Indeed,
`
`Patent Owner does not explain why certain changes and deletions are even
`
`necessary at all and thus fails to carry its burden. Moreover, at least the following
`
`proposed amendments are not responsive to the instituted grounds: Elements 24c,
`
`29e, 29f (“a root one of the nodes” and “no other one of the nodes”); Element 24e
`
`(“each of the nodes of the second portion instead establishing a logical grouping
`
`defining a scope of the subset of the items”); Element 25, 30 (“each representative
`
`of some further constraint defined subset portion of the subset of the items that are
`
`logically grouped”).
`
`C.
`
`Patent Owner Fails to Show Support in the Original
`Disclosure.
`
`A motion to amend must also show written description support in the
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`original disclosure of the patent for each claim that is added or amended (37 C.F.R.
`
`§ 42.221(a)(2)(ii); Paper No. 19 at 4). The Board has explained that
`
`merely indicating where each claim limitation [is] individually
`described in the original disclosure may be insufficient to demonstrate
`support for the claimed subject matter as a whole. For instance, the
`statement ‘Proposed claim 21: See, e.g. existing claims 6, 14, and 15’
`without any explanation is on its face inadequate for the patent owner
`to meet its burden.
`Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper No. 27, at 3 (P.T.A.B. June
`
`3, 2013). Moreover, the Board has recognized that although proposed substitute
`
`claims need not be described “in haec verba” in the original disclosure, if “the
`
`claim language does not appear in ipsis verbis in the original disclosure, a mere
`
`citation to the original disclosure without any explanation of why one of ordinary
`
`skill would have recognized that the inventor possessed the claimed subject matter
`
`as a whole may be similarly inadequate.” Nichia, Paper No. 27, at 4.
`
`This is precisely the approach taken by Patent Owner (see, e.g., Paper 22 at
`
`7-12). For instance, Patent Owner cites portions of the ’180 application (Ex. 2005)
`
`and claims, with no explanation as to why these cited portions are supportive of the
`
`proposed amendments or even which proposed amendment they are allegedly
`
`supportive of (see generally, Paper 22; Ex. 2004). Nor do the cited portions clearly
`
`support the proposed amendments (Ex. 1018, ¶¶ 100-101; see Elements 24(a) &
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`4
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`29(d) (a disclosure that the browse hierarchy “specif[y] a hierarchically defined
`
`organization of a plurality of items stored in a database” is not found in the cited
`
`portions for those elements)).
`
`In fact, nowhere in the original disclosure does the proposed substitute claim
`
`language appear verbatim (see generally, Ex. 2005). Nor does Patent Owner’s
`
`expert Dr. Nettles provide any meaningful discussion of the cited support or why
`
`one of ordinary skill in the art would understand them to support the proposed
`
`claim language; rather, he merely parrots the identical insufficient chart in Patent
`
`Owner’s brief (see id.). Patent Owner has not met the requirements of 37 C.F.R.
`
`§ 42.121(b). Its Motion to Amend should be denied.
`
`D.
`
`Patent Owner Fails to Carry Its Burden on Claim Construction.
`
`Despite proposing a number of additional terms to its patent claims, Patent
`
`Owner provides a claim construction for only one of these terms, “browse
`
`hierarchy” (see Paper 22 at 6). Yet, Patent Owner proposed a number of additional
`
`terms, at least some of which require construction, such as “browse activated one
`
`of the nodes” (see Paper 22 at 2-6). The meaning of this term is critical to
`
`determining whether the proposed substitute claims are patentable, yet Patent
`
`Owner fails to provide even a cursory analysis of the meanings of this term and
`
`thus fails to carry its burden of proof under 37 C.F.R. § 42.20(c); see also Nichia
`
`Corp. v. Emcore Corp., IPR2012-00005, 2014 WL 574596, at *28 (P.T.A.B. Feb.
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`5
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`11, 2014) (“Without a proper construction of the new claim terms, Emcore’s
`
`motion does not provide adequate information for the Board to determine whether
`
`Emcore has demonstrated the patentability of its proposed substitute claims, and
`
`thus, Emcore fails to meet its burden of proof under 37 C.F.R. § 42.20(c).”).
`
`Moreover, the one claim construction Patent Owner does propose is clearly
`
`not supported by the specification (Ex. 1018, ¶¶ 50-68). Patent Owner argues that
`
`“browse hierarchy” should be construed to mean “an operative hierarchy that, in
`
`correspondence with browse-related activation of nodes thereof, specifies an
`
`organization imposed on items in a database” (Ex. 2004, ¶ 28). As a preliminary
`
`matter, this construction is circular. Dr. Nettles’ declaration indicates that “browse
`
`hierarchy” and “hierarchy” have the same meaning, yet the proposed construction
`
`defines “browse hierarchy” to be an “operative hierarchy” (Ex. 2004, ¶ 28)
`
`The term “browse” is used in the ’282 Patent to describe following a path
`
`through a hierarchy (Ex. 1001 at 3:25-35). Since a user could follow the path
`
`through a hierarchy using a pen and paper, the term “browse hierarchy” should
`
`have the same meaning as a “hierarchy,” which is “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” (Ex. 1018, ¶¶ 51-56).
`
`Patent Owner’s assertion that the “browse hierarchy” is an “operative
`
`hierarchy” is unfounded. A person of ordinary skill in the art would understand
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`that an organization of data or data structures are typically not operative, i.e. the
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`data stored in a structure can be manipulated or used by a procedure that is part of
`
`a larger system but the structure itself does not include those procedures or
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`methods (Ex. 1018 at ¶¶ 59-60). Dr. Nettles acknowledges the distinction between
`
`the data and the use of that data, as he testified that one must examine how the
`
`hierarchy is used to determine if it is the hierarchy in the claims (Ex. 1016 at
`
`92:10-20). A person of ordinary skill in the art would understand that the only
`
`type of data structure that is operative (or includes a definition of the methods or
`
`procedures used to manipulate those structures) are “objects” in object-oriented
`
`systems (Ex. 1018 at ¶ 60). Nothing in the specification, however, limits or even
`
`suggests that the purported invention was limited to an object oriented system.
`
`The requirement that the hierarchy be an “operative data structure” is thus
`
`improper (id. at ¶¶ 59-60).
`
`Second, the “operative hierarchy” and “browse related activation of the
`
`nodes” of Patent Owner’s construction do not “specify an organization imposed on
`
`items in a database.” The claimed hierarchy and its nodes represent a set of items
`
`in the database and is thus a structure separate from the database (Ex. 1018 at
`
`¶¶ 62-64; Ex. 1016 at 98:12-16; Ex. 1001, Abstract; 3:29-36; 3:44-45). Further,
`
`the hierarchy and a query generated by activating the nodes do not alter or update
`
`the contents of the items in the database and thus cannot impose any organization
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`on those items (Ex. 1018 at ¶¶ 62-64; Ex. 1016 at 97:23-98:6).
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`Because Patent Owner has provided an erroneous claim construction for one
`
`term and failed to provide a claim construction for at least one key term, Patent
`
`Owner has not provided adequate information for the Board to determine whether
`
`Patent Owner has demonstrated the patentability of its proposed substitute claims.
`
`Thus, Patent Owner fails to meet its burden of proof under 37 C.F.R. § 42.20(c).
`
`E.
`
`The Proposed Claims Are Not Directed to Patentable Subject
`Matter.
`
`Even if Patent Owner’s Motion to Amend satisfied the other statutory and
`
`regulatory requirements (which it does not) the proposed amendments are
`
`insufficient to elevate the claimed subject matter to a patentable state under 35
`
`U.S.C. § 101. Like the original claims of the ’282 Patent, the proposed amended
`
`claims recite nothing more than the implementation of an abstract idea through
`
`well-known, routine, and conventional technology.
`
`As discussed in the claim-by-claim analysis below, each of the proposed
`
`amended claims fails to add any meaningful limitation on the abstract idea at issue.
`
`Patent Owner states that the proposed “browse hierarchy imparts concrete
`
`organization on information stored in the database,” (Paper 22 at 13), but this is
`
`simply wrong. First, the hierarchy disclosed in the ’282 Patent and claimed in the
`
`proposed claim amendments is not “concrete” or “physical” (Ex. 1018, ¶¶ 77-86).
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`8
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`Moreover, even if the hierarchy were considered physical, the hierarchy does not
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`impart a “concrete organization” on the data (id.). The ’282 Patent describes that
`
`the hierarchy can be used to generate a database query, but a database query does
`
`not affect the organization of the data in the database (id.). Likewise, Patent
`
`Owner relies on the “operative” nature of the proposed claims, but merely
`
`implementing an abstract idea on a general purpose computer is insufficient (Ex.
`
`1018, ¶¶ 77-86). See Bancorp Servs., LLC v. Sun Life Ins. Co. of Can. (U.S.), 687
`
`F.3d 1266, 1277-78 (Fed. Cir. 2012) (the computer required by the claims was
`
`“employed only for its most basic function, the performance of repetitive
`
`calculations, and as such does not impose meaningful limits on the scope of those
`
`claims.”); see also, e.g., Accenture Global Servs, GmbH v. Guidewire Software,
`
`Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
`
`The specific proposed claims are discussed in more detail below.
`
`Proposed Claim 24 Proposed Claim 24 is directed to a system with an
`
`application server and a “browse hierarchy” used by the applications serve to
`
`“represent[] and specify[] a hierarchically defined organization” of items in a
`
`database. The proposed claim does not claim patent-eligible subject matter.
`
`As noted above, addition of a “browse hierarchy” and related language is
`
`insufficient in several ways. Second, the specification makes clear that use of a
`
`hierarchy in conjunction with an application server was well-known, routine, and
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`conventional (see, e.g., Ex. 1001, 6:3-7; Ex. 1018, ¶ 91). For instance, the
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`specification provides that “[t]he application server 8 can be any server capable
`
`computer, including a PC server capable of running the Windows NT operating
`
`system available from Microsoft Corporation” (Ex. 1001, 6:3-7). Moreover, it was
`
`well-known to use hierarchies to facilitate browsing of websites (Ex. 1001, 1:41-
`
`46; 2:1-15; Ex. 1018, ¶ 81). Accordingly, the claim is not meaningfully limited.
`
`The foregoing analysis for claim 24 also applies to claim elements 29d-29h
`
`(see Paper 22 at 10-11).
`
`Proposed Claim 25. Proposed Claim 25 is directed to the system of claim
`
`24 wherein the nodes of the second portion of the browse hierarchy that establish
`
`respective logical groupings have child nodes which represent a “further constraint
`
`defined” subset portion.
`
`As discussed above with regard to claim 24, proposed claim 25 does not
`
`claim patent-eligible subject matter. Claim 25’s addition of the elements which
`
`describe how the child nodes of the logical grouping nodes are “further constraint
`
`defined” is also not responsive to the instituted grounds. It is simply an additional
`
`abstraction related to how the various subsets are organized (logical v. constraint-
`
`based), rather than a limitation that seeks to impart meaningful limitation. All the
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`proposed claim amendment requires is that the child nodes of the second portion of
`
`nodes be organized by constraint, which is not sufficient to impart patentability. In
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`10
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`fact, the specification discloses that the use of constraint-defined groups was well-
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`known in the prior art (Ex. 1018, ¶¶ 79-84).
`
`The foregoing analysis for claim 25 also applies to claim 30 (see Paper 22 at
`
`11).
`
`Proposed Claim 26. Patent Owner states that the additions of “browse
`
`activated” and related language to claim 26 “[e]mphasize[s] operative nature of
`
`‘browse activated’ node as ‘constrained by the aggregation of any constraints
`
`specified by the particular browse activated node and all of its ancestors’” (Paper
`
`22 at 9). However, this additional language does not create a patentable claim.
`
`As discussed earlier, the use of a hierarchy implemented on a computer was
`
`well-known. It was also well-known prior to the invention to include nodes in
`
`such a hierarchy that were capable of being selected (a.k.a., “browse activated”)
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`(Ex. 1018, ¶ 81). The ’282 Patent describes a prior art method of managing a
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`browsing process for “Internet based commerce,” which involved “organiz[ing] the
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`catalog items in the database into some form of hierarchy” using nodes that “guide
`
`the buyer through the catalog of product offerings” (Ex. 1001 at 1:41-46; 2:1-16;
`
`see also Ex. 1016 at 56:7-17, 68:8-22). The nodes used in this method were
`
`implemented on general purpose computers, and thus the use of a selectable or
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`“browse activated” node on a computer does not meaningfully limit the claimed
`
`invention (see Ex. 1018, ¶ 81).
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`The foregoing analysis for claim 26 also applies to claim 31 (see Paper 22 at
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`11-12).
`
`Proposed Claim 27. Proposed claim 27 adds language regarding the
`
`“‘formulation of’ a search rule from which the application server derives and
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`communicates to the database the executable query and thereby retrieves and
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`returns a subset of catalog information a subset of catalog information that includes
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`‘unique identifiers for’ all of the items stored in the database that meet the
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`aggregation of constraints” (see Paper 22 at 9). The proposed claim does not
`
`meaningfully limit the abstract idea.
`
`For instance, the formulation of queries on a database to retrieve and return
`
`data was, at the time of the invention, well-known and routine (Ex. 1018, ¶ 93).
`
`Also, as noted above, the claimed application server may be any server capable
`
`computer, such as simply a general purpose computer running a standard operating
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`system (Ex. 1018, ¶ 91). Also, the use of product identifiers, such as “unique SKU
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`ID,” has been long known in the art, since well before the time of the invention
`
`(Ex. 1001, 4:52-54). The proposed claim requires nothing more than an abstract
`
`idea of searching for and identifying catalog information which includes identifiers
`
`for each item, implemented on a general purpose computer. Thus, the proposed
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`claim does not claim patent-eligible subject matter.
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`Moreover, Patent Owner’s amendments seek to enlarge the scope of the
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`claims by reading out an entire dependent claim. That is, proposed claim 27 is a
`
`proposed substitute for existing claim 5, which depends from existing claim 4.
`
`Patent Owner, however, has amended proposed claim 27 such that it now depends
`
`from proposed claim 26, which a proposed substitute for existing claim 3, not
`
`claim 4. Thus, Patent Owner has completely read out the limitations contained in
`
`existing claim 4, namely “wherein the aggregation of any constraints comprises a
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`logical ANDing of all of the constraints aggregated.” (Ex. 1001, cl. 4). This
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`language does not appear anywhere in the proposed amended claims, nor does
`
`Patent Owner address this issue or why the removal of this entire feature is
`
`responsive to a ground of patentability (see generally, Paper 22). Accordingly,
`
`proposed claim 27 is not only not patent-eligible, but it also runs afoul of the rules
`
`governing motions to amend. See 37 C.F.R. § 42.121(a)(2)(ii); see also Nichia,
`
`IPR2012-00005, 2014 WL 574596, at *29 (“A proposed substitute claim is not
`
`responsive to a ground of unpatentability of a challenged claim if it removes any
`
`feature of the challenged claim being replaced”).
`
`The foregoing analysis for claim 27 (including the improper enlargement of
`
`claim scope) also applies to claim 32 (see Paper 22 at 11-12). Proposed claim 32 is
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`a proposed substitute for existing claim 15 which depends from claim 14.
`
`Proposed claim 32, however, depends from claim 31, which is a proposed
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`substitute for existing claim 13, not claim 14. As discussed above, this removes
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`the entire limitation of claim 14, namely “wherein the aggregation of any
`
`constraints comprises a logical ANDing of all of the constraints aggregated” (see
`
`Ex. 1001, cl. 14).
`
`Proposed Claim 28. Proposed claim 28 simply adds language relating to the so-
`
`called “browse hierarchy,” similar to the language added to claim 24, but in the
`
`context of the “leaf node.” As discussed above, a browse hierarchy “used by
`
`application server” and “operable” to generate a search rule for node in response to
`
`activation of the node is not a meaningful limitation. It is simply a way of
`
`implementing the abstract idea of browsing catalog data on a general purpose
`
`computer. This principle is no different when applied to the third portion / leaf
`
`node as opposed to the first and second portion nodes.
`
`Further, because proposed claim 28 depends from proposed claim 27, it also
`
`improperly broadens the claim scope by omitting all the limitations of the
`
`intervening dependent claim as discussed above (see supra, Proposed Claim 27).
`
`The foregoing analysis for claim 28 (including the improper enlargement of
`
`the claim scope) also applies to claim 33 which depends from claim 32 (see Paper
`
`22 at 12).
`
`Proposed Claim 29. Proposed claim 29 is directed to a method of representing
`
`items stored in a database hierarchically which includes use of a browse hierarchy.
`
`14
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`However, nothing in the claim meaningfully limits the claim such that it is
`
`patentable subject matter.
`
`As an initial matter, simply requiring that the items be stored in a database
`
`does not impart any meaningful limitation on the claim. Storing items in a
`
`database was well-known, routine, and conventional at the time of the invention of
`
`the ’282 Patent (Ex. 1018, ¶ 93; Ex. 1016 at 138:4-7, 138:15-21, 68:17-22).
`
`Moreover, as discussed in the context of claim 24, implementing an abstract idea,
`
`such as browsing a catalog, on a general purpose computer, is simply insufficient
`
`to impart patentability to the otherwise abstract idea.
`
`Proposed Claims 30-33. As noted, the analysis above applies equally to
`
`proposed claims 30-33, which are method counterparts to proposed claims 25-28.
`
`III. CONCLUSION
`
`Patent Owner has failed to comply with a number of the requirements of a
`
`Motion to Amend. Any one of these failures requires denial of Patent Owner’s
`
`Motion to Amend. Because Patent Owner has failed to carry its burden and the
`
`proposed claims fail to claim patent-eligible subject matter, Patent Owner’s Motion
`
`to Amend should be denied.
`
`Dated: March 19, 2014
`
`Respectfully submitted,
`
`/Keith E. Broyles/
`Keith E. Broyles (Reg. No. 42,365)
`
`15
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`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`keith.broyles@alston.com
`Jason P. Cooper (Reg. No. 38,114)
`jason.cooper@alston.com
`David S. Frist (Reg. No. 60,511)
`david.frist@alston.com
`ALSTON & BIRD LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, Georgia 30309-3424
`Tel.: (404) 881-7000
`Fax: (404) 881-7777
`
`Attorneys for Petitioner Volusion, Inc.
`
`16
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 CFR § 42.205, that service
`
`of PETITIONER VOLUSION, INC.’S OPPOSITION TO PATENT OWNER’S
`
`MOTION TO AMEND was made by email upon all counsel of record and service
`
`by UPS overnight delivery on the following counsel for the Patent Owner on
`
`March 19, 2014 as listed below:
`
`David W. O’Brien
`William B. Nash
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Ste. 700
`Dallas, TX 75219
`Telephone: (512) 867-8457
`Fax: (214) 200-0853
`Email: david.obrien.ipr@haynesboone.com
`Email: bill.nash@haynesboone.com
`
`March 19, 2014
`
`/Keith E. Broyles/
`Keith E. Broyles
`(Reg. No. 42,365)
`
`17
`
`
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