Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`VOLUSION, INC.
`Petitioner
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`v.
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`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
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`AND
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`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
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`Case CBM2013-00017
`Patent 6,834,282
`_____________________
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`PATENT OWNER’S SUBSTITUTE REPLY TO
`PETITIONER’S OPPOSITION TO MOTION TO AMEND
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`The Board authorized this limited filing in its Order entered April 25, 2014 (Paper No. 36). Per the
`Board’s Order, this substitute reply is submitted only to meet the page limit of 37 CFR 42.24, and
`not to make any other changes.
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`Patent Owner’s Motion to Amend Reply
`CBM2013-00017 (Patent 6,834,282)
`While Patent Owner bears movant’s burden under 37 C.F.R. § 42.20(c), 35 U.S.C. § 326(e)
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`requires the Petitioner to carry the “burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.” As Petitioner’s Opposition (“Opp.”) and evidence do not satisfy
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`this burden, Patent Owner’s proposed claims should be substituted if contingencies are triggered.
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`I. Petitioner Misstates the Requirement of Showing the Proposed Amendments are Responsive
`Petitioner alleges that “Patent Owner does not explain why certain changes and deletions
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`are even necessary at all and thus fails to carry its burden.” Opp., p. 3. But a piecewise explanation
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`of each individual change is neither contemplated by the statute and rules, nor is it consistent with
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`the Office’s interpretation of an “amendment.” The Office’s rules and prior practice are clear: an
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`“amendment” is the entire set of changes (additions and deletions) to a claim. See e.g., 37 C.F.R. §
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`1.121. Rule 42.221(a)(2)(i) does not state that responsiveness of each addition or deletion must
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`be inventoried piecewise, but rather, that the amendment be responsive to a ground of
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`unpatentability. Petitioner does not (and cannot) point to any requirement for piecewise inventory
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`of how each individual change to a claim affects patentability. Proposed amendments as a whole
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`are not only responsive to the § 101 grounds on which trial was instituted, but indeed overcome
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`such grounds as detailed in the Motion to Amend (at pp. 12-15) and supported by Dr. Nettles’
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`testimony (Exh. 2004, ¶¶ 15-18, 30-53).
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`II.
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`The Motion to Amend Properly Identifies Written Description Support
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`Petitioner alleges that Patent Owner failed to comply with 37 C.F.R. § 42.221(b)(1). Opp.,
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`pp. 3-4. As previously stated by the Board, the written description requirement is satisfied when the
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`original disclosure “reasonably conveys to a person of ordinary skill in the art that the inventor had
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`–1–
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`Patent Owner’s Motion to Amend Reply
`CBM2013-00017 (Patent 6,834,282)
`possession of the claimed subject matter.” Nichia Corp. v. Emcore Corp., IPR2012-00005, Final
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`Written Decision, Paper No. 68, at 54. (PTAB Feb. 11, 2014), citing Ariad Pharms., Inc. v. Eli Lilly &
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`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
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`For each and every limitation of proposed claims 24-33, Patent Owner identified support in
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`the ’180 application, and Dr. Nettles confirmed that a person of ordinary skill in the art would
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`recognize that the inventor had possession of claims 24-33. Exh. 2004, ¶¶ 54-88. Petitioner’s
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`declarant has not alleged that the ’180 application does not convey to him that the inventor had
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`possession of the claimed subject matter.1 Nor does he perform a substantive analysis of
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`specification support, and his sole allegation (Exh. 1018, ¶ 102) is that Dr. Nettles fails to identify
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`support for the claim limitation that the browse hierarchy “specif[ies] a hierarchically defined
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`organization of a plurality of items stored in a database.” This allegation is demonstrably false. Exh.
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`2004, ¶¶ 56, 74. Indeed, the Petitioner’s “evidence” boils down to a mere conclusory
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`“disagree[ment] that [Dr. Nettles] has cited the necessary support.” Exh. 1018, ¶ 101.
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`Petitioner’s arguments are unpersuasive and fail to rebut the patentability of claims 24-33.
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`III.
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`Patent Owner’s Motion to Amend Construed All Relevant Terms
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`Petitioner alleges the construction of “browse activated one of the nodes” is “critical to
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`1 Though Petitioner belatedly presents a proposed level of ordinary skill in the art that differs from
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`Patent Owner’s, the difference is irrelevant, as Petitioner’s declarant confirmed during cross-
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`examination that his opinions and analysis would have been the same had they been based on
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`Patent Owner’s timely-proposed level of skill in the art. Exh. 2009 at 56:12-21.
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`–2–
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`Patent Owner’s Motion to Amend Reply
`CBM2013-00017 (Patent 6,834,282)
`determining whether the proposed substitute claims are patentable.” Opp. at 5-8. However,
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`Petitioner does not allege that the term is ambiguous, or that the construction of the term is
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`unclear, nor does Petitioner’s declarant specify any confusion regarding “browse activated one of
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`the nodes.” Quite to the contrary, construction of “browse activated one of the nodes” is clear: a
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`node activated during browsing. The ’282 Patent supports such a construction: “[f]or each leaf
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`node activated during the browse process…” Exh. 1001 at 6:20. Dr. Nettles cited portions of the
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`‘180 Application that discuss and support such a browse activation: “[f]or example, according to
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`the ’180 application, ‘whenever a leaf node is selected (i.e. activated), the constraints specified by
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`the leaf node and all of its ancestors are ANDed together…” Ex. 2004 at ¶ 39. Petitioner’s
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`conclusory argument to the contrary is simply inadequate.
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`IV.
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`Petitioner’s Patentable Subject Matter Analysis is Flawed
`Earlier in the proceeding, Petitioner and the Board each posited different abstract ideas.
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`Petitioner suggested that claims 1-20 attempt to claim “the abstract idea of organizing product-
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`related data to facilitate catalog browsing.” Pet. at 25, Decision at 15. The Board posited that claim
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`11 is “drawn to the abstract idea of representing a plurality of items in a database hierarchically.”
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`Decision at 15. Dr. Nettles addressed both in his declaration. Exh. 2004, ¶ 17.
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`When asked about the Board’s abstract idea, Dr. Greenspun stated that original claim 11 of
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`the ’282 Patent would not pre-empt all practical implementations of the Board’s abstract idea:
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`“[t]he Board’s summary of the abstract idea is a broader abstract idea than the one that I used for
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`my analysis. I think it is possible that that would cause there to be some…practical
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`implementations of the Board’s abstract idea summary that would not be preempted by claim 11.”
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`–3–
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`Patent Owner’s Motion to Amend Reply
`CBM2013-00017 (Patent 6,834,282)
`Exh 2009 at 116:12-21. As proposed substitute claim 29 is necessarily narrower than claim 11 for
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`which it is proposed as a replacement, Dr. Greenspun thus confirms that proposed claim 29 and
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`dependent claims 30-33 do not preempt all practical applications of the Board’s abstract idea. Nor
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`does Dr. Greenspun state that proposed claim 24 preempts all practical applications of the
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`Petitioner’s original abstract idea or the Board’s abstract idea. Indeed, notwithstanding an apparent
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`view (Exh. 1018, ¶¶ 91-94) that any feature standing alone is well-known, routine and
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`conventional, his limited analysis of proposed claim 24 fails to consider many of its added features
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`which restrict the claim to a practical application and not merely an abstract idea.
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`Instead of properly limiting the opposition to the abstract ideas in the record, Petitioner and
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`its declarant have belatedly decided that a third (and newly posited) abstract idea is relevant to the
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`claims. Specifically, Dr. Greenspun asserts that the “abstract idea of the claims includes at least the
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`following: (1) organizing product-related data to facilitate catalog browsing by representing a
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`plurality of items in a database hierarchically and (2) an organization that uses logical and
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`constraint based representations of the items.” Exh. 1018 at ¶ 75. Dr. Greenspun indicated that
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`this abstract idea was used throughout his analysis. Exh. 2009 at 116:22-25. But this alleged
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`abstract idea cannot be found in either the Petition or the Institution Decision. Petitioner claims that
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`its Opposition of the proposed claims is based on “the abstract idea at issue”2, but this is clearly
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`2 Petitioner also alleges that proposed claim 27 requires “nothing more than an abstract idea of
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`searching for and identifying catalog information which includes identifiers for each item” and that
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`proposed claim 28 implements “the abstract idea of browsing catalog data.” Opp. at 12, 14.
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`–4–
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`Patent Owner’s Motion to Amend Reply
`CBM2013-00017 (Patent 6,834,282)
`not the case, as its declarant testified. Opp. at 8. Accordingly, as Petitioner’s analysis and argument
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`are based on an incorrect and unsupported statement of fact, they should be ignored as irrelevant.
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`Other facts and arguments Petitioner and its declarant assert are incorrect, inadequate, or
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`unpersuasive. For example, both assert that the ‘282 Patent states that an application server in
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`conjunction with a hierarchy was well-known, routine and conventional. Opp. at 10, Exh. 1018 at
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`¶ 91. But on cross-examination, Dr. Greenspun acknowledged that his statement is not in-fact
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`based on the ‘282 Patent. Exh. 2009 at 150:10-16. Further, Petitioner alleges that elements of
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`proposed claims 26 and 31 were well-known, but makes no statement regarding “aggregation of []
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`constraints specified by the particular browse activated node” as recited. Opp. at 11-12. Similarly,
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`with respect to proposed claim 27, Petitioner’s analysis is based on a new abstract idea, and fails
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`to carry its burden of showing that claim 27 preempts the abstract idea at issue in this proceeding.
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`As previously explained by Dr. Nettles (Exh. 2004, ¶¶ 15-18, 30-34, 36-43, and 45-47),
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`the proposed claims do not seek to monopolize any abstract idea properly posited in these
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`proceedings. Rather, the proposed claims add meaningful limitations (Exh. 2004, ¶¶ 17, 31-34,
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`and 36-44) that satisfy § 101 subject matter eligibility standards, and should be substituted if their
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`respective contingencies are triggered. Petitioner’s Opposition fails to provide any sufficient
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`evidence to rebut the patentability of the substitute claims.
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`Proposed claims 27 and 28 are similar in scope to original claims 5 and 6 and thus, these new
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`abstract ideas, which have never before been advanced or analyzed, are not “respond[ing] to new
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`issues arising from proposed substitute claims” and should be ignored. 77 FR 48,756, 48,767.
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`–5–
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`/David W. O’Brien, Reg. No. 40,107/
`Dated: April 25, 2014
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`CBM2013-00017 (U.S. Patent No. 6,834,282)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`VOLUSION, INC.
`Petitioner
`v.
`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
`_________________
`Case CBM2013-00017
`Patent 6,834,282
`Title: LOGICAL AND CONSTRAINT BASED BROWSE HIERARCHY WITH PROPAGATION FEATURES
`_____________________
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that service was made on the Petitioner
`as detailed below.
`Date of service April 25, 2014
`Manner of service (1) by email upon counsel of record listed below and
`(2) by Federal Express
`Documents served Patent Owner’s Substitute Reply to
`Petitioner’s Opposition to Motion to Amend
`Persons served Keith E. Broyles (keith.broyles@alston.com)
`Alston & Bird LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
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`/David W. OBrien/
`David W. O’Brien
`Registration No. 40,107
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