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 REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`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 REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... ii
`
`LIST OF EXHIBITS................................................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`ARGUMENT...................................................................................................2
`
`A.
`
`B.
`
`C.
`
`Patent Owner Has Surrendered Claims 1-10. .......................................2
`
`Patent Owner’s Arguments Rest on Improper Claim
`Construction ..........................................................................................2
`
`Claims 11-20 Are Not Directed to Patentable Subject Matter..............7
`
`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
`Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) .....................................................................13
`
`Blackberry Corp. v. MobileMedia Ideas LLC,
`IPR2013-0016, 2014 WL 824372 (P.T.A.B. Feb. 25, 2014) ..........................2
`
`CLS Bank Int'l v. Alice Corp. Pty. Ltd.,
`717 F.3d 1269 (Fed. Cir. 2013), cert. granted, 134 S. Ct. 734 (2013)......9, 10
`
`Globus Med., Inc. v. N Spine, Inc.,
`Appeal 2013-009720, 2014 WL 343785 (P.T.A.B. Jan. 29, 2014).................5
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2013-00004, Paper No. 26 (P.T.A.B. Sept. 3, 2013)..............................4
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012)...................................................................................10
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013) .......................................................... 9, 10, 13
`
`Other Authorities
`
`37 C.F.R. § 42.24 .......................................................................................................2
`
`37 C.F.R. § 42.6 .........................................................................................................2
`
`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:
`
`Declaration of Philip Greenspun in Support of Petitioner’s
`Reply to Patent Owner Response
`
`Exhibit 1018:
`
`Declaration of Philip Greenspun in Support of Petitioner’s
`Opposition to Motion to Amend
`
`Exhibit 1019:
`
`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
`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`INTRODUCTION
`I.
`Patent Owner’s Response fails to refute Petitioner’s showing that claims 1-
`
`20 of U.S. Patent No. 6,834,282 (“the ’282 Patent”) are unpatentable under 35
`
`U.S.C. § 101. Instead, the Response is based on legal, factual, and procedural
`
`errors. First, Patent Owner fails to even address half of the challenged claims of
`
`the ’282 Patent and then misstates the explicit language of the claims it does
`
`address. Moreover, Patent Owner’s arguments depend exclusively on the adoption
`
`of Patent Owner’s flawed claim construction of “hierarchy” which is contrary to
`
`the record evidence, including the testimony of Patent Owner’s own expert.
`
`Further, the opinions of Patent Owner’s expert are not credible because he
`
`analyzes an overly-broad abstract idea he himself defines in an attempt to salvage
`
`the claims at issue. In doing so, Patent Owner’s expert fails to provide any
`
`analysis relevant to the question before the Board. Patent Owner’s expert also fails
`
`to address a key part of the patentability inquiry under Section 101 – determining if
`
`the limitations are more than well-known or routine pre- or post-solution activity.
`
`Finally, in an attempt to circumvent the Board’s page limit requirements,
`
`throughout its Response, Patent Owner incorporates by reference arguments
`
`contained solely in the declaration of its expert. Such use of a declaration to
`
`circumvent the rules is improper. Blackberry Corp.. v. MobileMedia Ideas LLC,
`
`IPR2013-0016, 2014 WL 824372, at *11 (P.T.A.B. Feb. 25, 2014) (“incorporation
`
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`of arguments from one document into another is prohibited by 37 C.F.R. §
`
`42.6(a)(3)…[and] violates the page limit set forth in 37 C.F.R. § 42.24(a)(l)(v)”).
`
`In the end, Patent Owner’s response does nothing to refute the evidence and
`
`arguments contained in Petitioner’s petition. Claims 1-20 of the ’282 Patent are
`
`invalid for lack of patentable subject matter under 35 U.S.C. § 101.
`
`II.
`ARGUMENT
`A.
`Patent Owner Has Surrendered Claims 1-10.
`Patent Owner has surrendered claims 1-10 by admittedly failing to challenge
`
`the findings in the Patent Trial and Appeal Board (“the Board”) Decision to
`
`Institute: “Patent Owner does not separately argue claims 1-10 in this Patent
`
`Owner Response” (Paper 23 at 11-12). As shown in the Petition and described in
`
`the Decision to Institute, claims 1-10 are directed to a hierarchy, which “constitutes
`
`no more than a conceptual framework” and are not patent-eligible (Paper 8 at 12-
`
`14; see also Paper 1). Because Patent Owner has surrendered these claims, this
`
`Reply does not include additional analysis specific to claims 1-10, but the
`
`arguments below related to claims 11-20 apply equally to claims 1-10.
`
`B.
`Patent Owner’s Arguments Rest on Improper Claim Construction
`Patent Owner’s Response is contingent on adoption of its own flawed
`
`construction of “hierarchy” that is different than the plain and ordinary meaning of
`
`the term. Indeed, Patent Owner has not provided any arguments in favor of
`
`patentability under any construction of “hierarchy” other than its own, including
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`the Board’s construction. Consequently, one thing is clear: unless the Board
`
`adopts Patent Owner’s flawed construction of “hierarchy,” Patent Owner has not
`
`set forth a single argument rebutting Petitioner’s showing of unpatentability.
`
`According to Patent Owner, “hierarchy” means “an operative data structure
`
`that, in correspondence with browse-related activation of nodes thereof, specifies
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`an organization imposed on items in a database” (Paper 23 at 30). This is not only
`
`inconsistent with the Board’s construction, but is also inconsistent with Patent
`
`Owner’s position in district court and the factual record in this proceeding.
`
`Patent Owner’s request for a narrow construction of “hierarchy” is
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`surprising. In the co-pending district court litigation between the parties, neither
`
`Patent Owner nor Petitioner stated that “hierarchy” required construction (Ex. 1019
`
`at 1-2). Patent Owner’s attempt to now have the Board adopt a narrow
`
`construction of “hierarchy” is inconsistent with its actions in district court and a
`
`transparent attempt to breathe life into claims that are otherwise directed to
`
`unpatentable subject matter (compare Ex. 1019 at 1-2 with Paper 23 at 8-11).
`
`As the Board has made clear, a person of ordinary skill in the art1 would not
`
`1 The parties dispute the required level of ordinary skill in the art (compare Ex.
`
`2003 at ¶ 13 with Ex. 1017, ¶¶ 24-29). Dr. Nettles’ description of the level of skill
`
`in the art is improper because he does not require any experience with e-commerce
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`understand the term “hierarchy” to have a different meaning in the context of the
`
`’282 Patent and thus should be interpreted according to its plain and ordinary
`
`meaning (Ex. 1014 at 10; Ex. 10172 at ¶¶ 45-49). The Board’s construction, which
`
`is derived from the definition in the Microsoft Dictionary, is consistent with the
`
`understanding of a person of ordinary skill in the art in light of the specification
`
`(Ex. 1001, 2:7-15 (“a hierarchy can be thought of as a simple tree structure . . .”;
`
`see also id. at 7:37-8:19; Fig. 3; Ex. 1017, ¶¶ 47-48). Patent Owner’s expert even
`
`conceded that a hierarchy can be thought of as “a simple tree structure” (Ex. 1016
`
`at 65:2-16; see also id. at 37:4-6, 44:22-24).
`
`Despite this clear definition of “hierarchy,” Patent Owner proposes that
`
`“hierarchy” means “an operative data structure that, in correspondence with
`
`browse-related activation of nodes thereof, specifies an organization imposed on
`
`items in a database” (Paper 23 at 30). Patent Owner’s proposed construction is
`
`websites (Ex. 1017, ¶¶ 24-29). Dr. Nettles’ description is likely motivated by the
`
`fact that he has no e-commerce experience (Ex. 1016, 62:7-10). The distinction in
`
`levels of skill, however, does not impact the meaning of hierarchy.
`
`2 Patent Owner argues that the factual record is closed, but Petitioner may file a
`
`reply declaration. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`
`CBM2013-00004, Paper No. 26, at 2 (P.T.A.B. Sept. 3, 2013).
`
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`improper because it narrowly interprets “hierarchy” in a manner that is inconsistent
`
`with the specification of the ’282 Patent. See, e.g., Globus Med., Inc. v. N Spine,
`
`Inc., Appeal 2013-009720, 2014 WL 343785, at *2 (P.T.A.B. Jan. 29, 2014) (“A
`
`particular embodiment appearing in the written description must not be read into
`
`the claim if the claim language is broader than the embodiment.”).
`
`First, the ’282 Patent does not require that a hierarchy be an “operative data
`
`structure.” A person of ordinary skill in the art would understand that data
`
`structures are typically not operative, i.e. the data stored in a structure can be
`
`manipulated or used by a procedure that is part of a system but the structure itself
`
`does not include those procedures or methods (Ex. 1017, ¶¶ 50-55). Patent
`
`Owner’s expert 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 are “objects” in object-oriented systems (Ex. 1017, ¶¶ 50-55). The
`
`specification is devoid of any suggestion that the purported invention was limited
`
`to an object oriented system, and thus the requirement that the hierarchy be an
`
`“operative data structure” is improper (id. at ¶¶ 50-55). Second, the claimed
`
`“hierarchy” does not “specify an organization imposed on items in a database.”
`
`Instead, the claimed hierarchy of the ’282 Patent represents a set of items in the
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`database and is thus a structure separate from the database (Ex. 1017, ¶¶ 50-55; Ex.
`
`1016 at 98:12-15). Further, the hierarchy does not alter or update the contents of
`
`the items in the database and thus cannot impose any organization on those items
`
`(Ex. 1017, ¶¶ 50-58; Ex. 1016 at 97:23-98:6). Similarly, the “browse-related
`
`activation of nodes” of Patent Owner’s construction does not specify an
`
`organization in the database (Ex. 1017, ¶¶ 50-58).
`
`Third, the “browse-related activation of nodes” requirement is improper
`
`because a “hierarchy” itself does not require that a user navigate the hierarchy (Ex.
`
`1017, ¶¶ 56-62). Patent Owner’s expert attempts to justify this position by arguing
`
`that a node must be able to be activated using a computer because it “provide[s] a
`
`real-world function to facilitate the search for and retrieval of relevant items from
`
`the database in concrete ways” (Ex. 2003, ¶¶ 40-47). Patent Owner, however, does
`
`not contest that “node” should be interpreted according to its plain and ordinary
`
`meaning (see Paper 8 at 10 (finding that, in the tree-type structure of the hierarchy,
`
`“a node is a location on the tree that can have links to one or more nodes below
`
`it”)). Further, Patent Owner’s interpretation of “node” is inconsistent with its own
`
`proposed claim construction in the co-pending district court litigation (Ex. 1019 at
`
`1) (“node” means a “[r]epresentation of an item or set of items stored in a database
`
`that inherits the constraints of its ancestors”). Nothing in the challenged claims
`
`requires that the nodes themselves be operable to be activated, generate a search, or
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`display results (Ex. 1017, ¶¶ 56-62). Rather, as noted by the Board, a “node”
`
`under the broadest reasonable interpretation is a “location on the tree [hierarchy]
`
`that can have links to one or more nodes below it” (Paper 8 at 10). The Board
`
`should reject Patent Owner’s improper claim construction of “hierarchy” and its
`
`attempt to interpret “node” contrary with its plain and ordinary meaning.
`
`C.
`Claims 11-20 Are Not Directed to Patentable Subject Matter.
`Patent Owner’s Response does nothing to refute Petitioner’s showing that
`
`claims 11-20 are not directed to patentable subject matter. Indeed, Patent Owner’s
`
`brief and testimonial support are almost entirely premised on misinterpretations of
`
`both the claim language and the abstract idea embraced by the claims.
`
`1. Claims 11-20 do not require “using” or “accessing” a
`hierarchy.
`Patent Owner’s arguments with respect to Claims 11-20 rest on the false
`
`premise that those claims are directed to methods of using and accessing a
`
`hierarchy: “claim 11 recites a specific implementation of a method of using a
`
`hierarchy operative in a computer system” Paper 23 at 17; see also Ex. 2003 ¶ 39
`
`(discussing the level of “programming required to implement the method of using
`
`and accessing the hierarchy as set forth in claim 11”). This is simply incorrect. As
`
`the Board recognized, the challenged claims are directed to representing a plurality
`
`of items in a database hierarchically, not using and accessing such a database
`
`(Paper 8 at 14-15; see Ex. 1001, cl. 11-20 (“[a] method of representing a plurality
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`of items in a database hierarchically”)).
`
`Claims 11-20 do not require the use of an operative hierarchy (see Ex. 1017,
`
`¶ 68). Rather, the claims simply require representation of items in a hierarchical
`
`form, which is nothing more than an abstract idea and can be accomplished by an
`
`person with pen and paper (Paper 8 at 14-15; Ex. 1017, ¶¶ 73-93). Thus, the crux
`
`of Patent Owner’s arguments – that the use of and access to a hierarchy requires
`
`computer-implementation via specially programmed software – is based on a fatal
`
`misunderstanding of the claims (Ex. 1017, ¶¶ 68; 73-93). The same is true of
`
`Patent Owner’s argument that “the claims require interaction with a database,
`
`which requires computer-implementation” (Paper 23 at 29; Ex. 2003 at ¶¶ 50-53).
`
`Once again, the claims recite a method of representing items that are located in a
`
`database, not interaction with the database (Ex. 1017, ¶ 68).
`
`2. Patent Owner’s definition of the abstract idea is misguided.
`Patent Owner and its expert focus almost exclusively on the argument that
`
`because claims 11-20 “do not preempt or completely monopolize the abstract idea
`
`of representing a plurality of items in a database hierarchically,” they are
`
`patentable (Paper 23 at 21; see also Paper 23 at 13-24; see generally Ex. 2003).
`
`Patent Owner’s recitation of the abstract idea as “representing a plurality of items
`
`in a database hierarchically” is overly broad because the abstract idea of the claims
`
`further requires an organization that uses logical and constraint based
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`representations of the items (see, e.g., Ex. 1001, 10:46-12:18 (cl. 1-20)). Patent
`
`Owner’s attempt to redefine the abstract idea more broadly evidences a
`
`fundamental misunderstanding of the law. As stated in Ultramercial, “[i]t 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.” Ultramercial, Inc.
`
`v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013); see CLS Bank Int'l v. Alice
`
`Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013), cert. granted, 134 S. Ct. 734
`
`(2013). Thus, Patent Owner’s attempt to redefine the abstract idea to avoid
`
`preemption is simply an irrelevant exercise in semantics.
`
`3. Claims 11-20 are not meaningfully limited.
`Even if Patent Owner’s description of the abstract idea was correct, merely
`
`showing that the claims do not preempt every practical application of an abstract
`
`idea is only the first part of the analysis. The second part of the analysis requires a
`
`determination of whether the claims are meaningfully limited. In Ultramercial the
`
`Federal Circuit noted that “the Supreme Court has stated that, even if a claim does
`
`not wholly pre-empt 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 audience, a category of use, field of use, or technological
`
`environment.” Ultramercial, 722 F.3d at 1346 (emphasis added). It is well-
`
`established that “[l]imitations that represent a human contribution but are merely
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`tangential, routine, well-understood, or conventional, or in practice fail to narrow
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`the claim relative to the fundamental principle therein, cannot confer patent
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`eligibility.” CLS Bank Int’l, 717 F.3d at 1283.
`
`Patent Owner states that “analyzing whether something was ‘conventional’
`
`or ‘routine’ involves facts” yet fails to proffer any such facts (see Paper 23 at 14).
`
`In fact, Patent Owner’s expert did not provide a single opinion regarding whether
`
`any aspect of the claims was well-known, routine, or conventional prior to the ’282
`
`Patent (see generally, Ex. 2003). He also admitted during his examination that he
`
`did not consider whether the limitations of the claims of the ’282 Patent were
`
`commonly used prior to the patent (Ex. 1016 at 201:24-202:8). Nevertheless, it is
`
`clear that there are no meaningful limitations of the challenged claims (see
`
`generally Ex. 1017). The claims simply require representation of a plurality of
`
`items in a hierarchical form, which is an abstract idea that can be performed by a
`
`person with pen and paper (Paper 8 at 14-15; Ex. 1017, ¶¶ 73-93).
`
`For example, independent claim 11 does not require a computer (see Ex.
`
`1017, ¶¶ 73-93; 104-107). The “apportioning” (first) step requires nothing more
`
`than organizing items into groups (Ex. 1001, 7:52-59; 8:24-28; Ex. 1017, ¶¶ 73-93;
`
`104-107). The “representing” (second) step merely describes how these groups are
`
`to be represented (Ex. 1001, 5:3-8; Ex. 1017, ¶¶ 73-93; 104-107). Contrary to
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`Patent Owner’s arguments that these two steps must be performed “on the items in
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`the database,” it is clear that they can be done without a computer, simply by
`
`writing down each group as a node, much like Figure 3 (Ex. 1017, ¶¶ 73-93; 104-
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`107). Moreover, even if these steps are computer-implemented, they can be
`
`performed by any general purpose computer (Ex. 1001, 10:25-36; Ex. 1017, ¶¶ 92-
`
`93). They also do not require any special software (Ex. 1017, ¶¶ 92-93).
`
`The specifying (third) and establishing (fourth) steps of claim 11 can also be
`
`done without a computer – namely, an individual can specify one or more
`
`constraints for the first portion (e.g., product type is PC) and can establish a logical
`
`grouping for a second portion of nodes (e.g., all clearance items) (see Ex. 1017,
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`¶¶ 73-93; 104-107). Patent Owner asserts that, for steps three and four, “a
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`constraint-specifying node in the hierarchy…specifies the subset defining
`
`constraints that … operatively impose an organization on items in the database”
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`and “second portion nodes define scope of apportioned [sic] into subsets of items
`
`in the database as logical groupings” (Paper 23 at 20 (emphasis original); Ex.
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`2003 at ¶¶15-21; ¶¶40-43). Patent Owner is wrong that the claimed nodes
`
`themselves must be operative in a computer environment (Paper 23 at 19-21; Ex.
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`2003 at ¶¶ 15, 20, 36; Ex. 1017, ¶¶ 59-62). Rather, an individual may “specify[]
`
`the constraints for each of a first portion of the nodes” and “establish[] a logical
`
`grouping of the items for a second portion of the nodes,” merely by drawing a
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`hierarchy with pen and paper (Ex. 1001, cl. 11; Ex. 1017, ¶¶ 73-93).
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`Even if the nodes were part of a computer-implemented operative hierarchy,
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`as Patent Owner suggests (which they are not), Patent Owner improperly attributes
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`characteristics to the nodes that are not required by all of the claims (Ex. 1017,
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`¶¶ 59-62). For example, Dr. Nettles opines that the nodes of the hierarchy
`
`“provide a real-world function to facilitate the search for and retrieval of relevant
`
`items from the database in concrete ways” and are more than representative of a
`
`subset of items stored in the database (Ex. 2003, ¶¶ 40-47). Yet despite Dr.
`
`Nettles’ view, nothing in the challenged claims requires that the nodes themselves
`
`be operable to facilitate a search and display results (Ex. 1017, ¶¶ 59-62).
`
`Even if the claims required a clickable, search-generating, results-displaying
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`node, this is not sufficient to impart patentability. The Board and both experts
`
`agree these were routine and conventional (Ex. 1017, ¶¶ 73-93; Ex. 1016, ¶¶ 56:7-
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`17, 68:8-22; Ex. 1014 at 14. Also, the specification of the ’282 Patent states that
`
`the idea may be implemented on a general purpose computer (Ex. 1001, 10:25-36;
`
`Ex. 1017, ¶¶ 92). Implementation on a general purpose computer does not
`
`meaningfully limit the claimed abstract idea. Bancorp Servs. v. Sun Life Assurance
`
`Co. of Can. (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012).
`
`Dr. Nettles also believes that “intricate and detailed computer programming”
`
`is required to implement the invention of the ’282 Patent. Yet, the intricate
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`programming described by Dr. Nettles is neither required by the claims nor
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`sufficient to transform the claimed abstract idea into patentable subject matter (Ex.
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`1017, ¶¶ 110-111). The Federal Circuit has clearly held that “the complexity of the
`
`implementing software or the level of detail in the specification does not transform
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`a claim reciting only an abstract concept into a patent-eligible system or method.”
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`Accenture Global Servs., 728 F.3d at 1345. Rather, “the important inquiry for a
`
`§ 101 analysis is to look to the claim.” Id.3 It is undisputed that the claims, even as
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`construed by Patent Owner, do not recite any specific software implementation
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`(see Ex. 1001, 10:46-12:18 (cl. 1-20); Ex. 1017, ¶¶ 110-111).
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`Finally, Patent Owner’s repeated reliance on the word “concrete” to impart
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`patentability to the challenged claims is misplaced (see, e.g., Paper 23 at 15; see
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`generally Ex. 2003). Dr. Nettles uses the word “concrete” to describe aspects of
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`the claims so as to require storage in a computer’s memory (see Ex. 1017, ¶¶ 18,
`
`30, 34, 40, 45, 47, 48, 56). Although it is unclear why Patent Owner focuses on
`
`the descriptor “concrete,” all of the elements described by Dr. Nettles as
`
`“concrete” are well-known, routine, and conventional (Ex. 1017, ¶¶ 94-103).
`
`The claims depending from claim 11 are equally unpatentable. Claim 13
`
`3 PO’s reliance on Ultramercial is misplaced, both because of its unique procedural
`
`posture (Accenture Global Servs., 728 F.3d at 1346) and the Board’s admonition
`
`against Patent Owner’s broad reading of Ultramercial (see Ex. 1014 at 15).
`
`13
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`depends from claim 11 and adds: “wherein the scope of the items represented by
`
`each of the nodes is constrained by an aggregation of any constraints specified by
`
`the node and all of its ancestors.” This claim can be performed by a human with
`
`pen and paper: it requires that the scope of items listed in each node be constrained
`
`by aggregating the constraints specified by that node and any ancestor nodes. For
`
`instance, any items in the High Performance PC group must be both personal
`
`computers and include a high performance processor (Ex. 1017, ¶¶ 73-93).
`
`Claim 14 depends from claim 13 and adds: “wherein the aggregation of any
`
`constraints comprises a logical ANDing of all of the constraints aggregated.” This
`
`limitation describes that the aggregation of constraints is limited to ANDing (rather
`
`than ORing or some other operations). This could be accomplished by someone
`
`with pen and paper – one would simply be constrained to grouping items by
`
`ANDing constraints (Ex. 1017, ¶¶ 83-84). For example, all items grouped in the
`
`Intel Inside High Performance PC group must be personal computers AND have
`
`high performance processors AND have Intel Inside as the processor vendor.
`
`Claim 15 depends from claim 14 and adds: “wherein the aggregation of
`
`constraints comprises a search rule that includes all of the items that meet the
`
`aggregation of constraints.” The claimed search rule could be written out such that
`
`the search rule meets the aggregation of constraints (Ex. 1017, ¶¶ 73-93).
`
`Claim 16 depends from claim 15 and adds: “wherein: a third portion of the
`
`14
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`nodes are leaf nodes, each of the leaf nodes having no children; and said hierarchy
`
`operable to determine the aggregation of constraints and to generate the search rule
`
`for each leaf node in response to activation of the leaf node.” This claim could be
`
`practiced by a person with pen and paper (Ex. 1017, ¶¶ 73-93). Using a hierarchy
`
`drawn on paper, a person could select or “activate” a leaf node and, using the
`
`constraints specified by the nodes in the hierarchy, generate a search rule. Further,
`
`it was routine and conventional for nodes in a hierarchy to be operable to be
`
`activated (Ex. 1016 at 78:7-13). Moreover, even if claims 13-16 were implemented
`
`on a computer, nothing more than well-known conventional software running on a
`
`general purpose computer is required (Ex. 1001, 10:25-36; Ex. 1017, ¶¶ 92).
`
`III. CONCLUSION
`Patent Owner’s Response is based on erroneous claim construction and a
`
`misunderstanding of the law. Patent Owner has not addressed claims 1-10 and has
`
`thus surrendered them. Moreover, Patent Owner has not, and cannot, point to any
`
`meaningful limitations in the claims. Rather, the claims of the ’282 Patent are
`
`directed to abstract ideas and, at most, include insignificant pre-or post-solution
`
`activity which Patent Owner’s own expert admits was well-known. Accordingly,
`
`these claims are invalid for failure to claim patent eligible subject matter.
`
`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 REPLY TO PATENT OWNER’S
`
`RESPONSE 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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