`
`Paper ____
`
`
`Filed on behalf of: Versata Software, Inc. and
`
`
`
` Versata Development Group, Inc.
`By: Nancy J. Linck, Lead Counsel
`
`Martin M. Zoltick, Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
`
`Washington, DC 20005
`
`Phone: 202-783-6040
`
`Facsimile: 202-783-6031
`
`E-mail: nlinck@rfem.com
`
`
` mzoltick@rfem.com
`
`
`
`
`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
`Patent 6,834,282
`_______________
`
`
`PATENT OWNER VERSATA’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Case CBM2013-00017
`
`A. 
`
`1. 
`
`a. 
`
`b. 
`c. 
`
`2. 
`
`3. 
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`I. 
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..................... 1 
`II. 
`STATEMENT OF REASONS WHY NO POST-GRANT REVIEW
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 324 ............................ 2 
`The ‘282 Patent Is Not A “Covered Business Method Patent” ............ 2 
`U.S. PATENT NO. 6,834,282 ......................................................... 3 
`The Novel and Unobvious Technological Features of The
`Challenged Claims (Claims 1-23) ............................................... 3 
`Problem Solved by the ‘282 Patent ............................................. 8 
`Detailed Description of the Claimed Novel and Unobvious
`Technological Features of ‘282 Patent ....................................... 9 
`The ‘282 Patent Claims a Technological Invention, Which Is
`Excluded From CBM Review. ....................................................... 13 
`The ‘282 Patent Does Not Claim a Method or Corresponding
`Apparatus Used in the Practice, Administration, or
`Management of Financial Products or Services. ............................ 20 
`35 U.S.C. § 101 Is Not a Condition of Patentability, and Thus Is
`Not a Permitted Ground on Which the Requested CBM Review
`Can be Instituted. ................................................................................. 24 
`Post-Grant Review Should Also Be Denied Under 35 U.S.C.
`§324(a) Because the Information Presented in Volusion’s Petition
`Does Not Demonstrate that Any of the Challenged Claims is
`Unpatentable. ....................................................................................... 31 
`III.  CONCLUSION ........................................................................................ 37 
`
`B. 
`
`C. 
`
`
`
`
`
`ii
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`

`

`Case CBM2013-00017
`
`TABLE OF AUTHORITIES
`
`Cases 
`
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) ................................................................................... 36, 37
`CLS Bank Int’l v. Alice Corp.,
`No. 2011-1301, 2013 U.S. App. LEXIS 9493 (May 10, 2013) .................... passim
`DealerTrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..................................................................... 26, 27
`Diamond v. Diehr,
`450 U.S. 175 (1981) .............................................................................................. 29
`In re Bergy,
`596 F.2d 952 (C.C.P.A. 1979)
`vacated as moot, 444 U.S. 1028 (1980) ......................................................... 29, 30
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ................................................................................... 33, 36
`Parker v. Flook,
`437 U.S. 584 (1978) .............................................................................................. 29
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 17
`Ultramercial, Inc. v. Hulu, LLC,
`No. 2010-1544, 2013 U.S. App. Lexis 12715 (Fed. Cir. June 21, 2013) ..... passim
`Statutes 
`
`35 U.S.C. § 101 ................................................................................................ passim
`35 U.S.C. § 102 ................................................................................................ passim
`35 U.S.C. § 103 ................................................................................................ passim
`35 U.S.C. § 112 ........................................................................................................ 27
`35 U.S.C. § 282 ................................................................................................... 7, 26
`35 U.S.C. § 282(b) ................................................................................................... 27
`35 U.S.C. § 282(b)(2)....................................................................................... passim
`35 U.S.C. § 282(b)(3)........................................................................................ 25, 27
`35 U.S.C. § 321 ........................................................................................................ 31
`
`
`
`iii
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`Case CBM2013-00017
`
`35 U.S.C. § 321(b) ........................................................................................... passim
`35 U.S.C. § 323 .......................................................................................................... 2
`35 U.S.C. § 324 ................................................................................................... 2, 24
`35 U.S.C. § 324(a) .............................................................................................. 2, 31
`35 U.S.C. §321(b) .................................................................................................... 26
`America Invents Act ................................................................................................ 25
`America Invents Act § 18 ............................................................................. 2, 13, 21
`America Invents Act § 18(b)(1) ............................................................................... 21
`America Invents Act § 18(d) ...................................................................................... 3
`America Invents Act § 18(d)(1) .............................................................. 3, 20, 21, 31
`Part II of Title 35 .............................................................................................. passim
`Rules 
`
`35 U.S.C. § 282(b)(2).............................................................................................. 27
`37 C.F.R. § 42.207(a) ................................................................................................. 1
`37 C.F.R. § 42.208 ................................................................................................... 16
`37 C.F.R. § 42.300(b) .............................................................................................. 17
`37 C.F.R. § 42.301 .................................................................................................1, 3
`37 C.F.R. § 42.304(a) ................................................................................................. 1
`Transitional Program for Covered Business Method Patents,
`77 Fed. Reg. 48,739 (Aug. 14, 2012)
`(codified at 37 C.F.R. pt. 42) ................................................................................ 22
`Legislative Materials 
`
`157 Cong. Rec. S5431
`(daily ed. Sept. 8, 2011)
`(statement of Sen. Kyl) ......................................................................................... 13
`157 Cong. Rec. S5432
`(daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer) ................................................................................. 21
`S. Rep. No. 1979, 82d Cong. 2d Sess. (1952) ......................................................... 26
`
`
`
`
`iv
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`

`

`Case CBM2013-00017
`
`Pursuant to 37 C.F.R. § 42.207(a), Patent Owner, Versata Software, Inc. and
`
`Versata Development Group, Inc. (collectively “Versata”), submit this Preliminary
`
`Response to the Petition for Post-Grant Review of U.S. Patent No. 6,834,282
`
`(“’282 patent”) filed by Volusion, Inc. (“Volusion”).
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`The Board should deny Volusion’s petition and not institute the requested
`
`covered business method review for three independent reasons.
`
`First, Petitioner has failed to show, pursuant to 37 CFR §§ 42.301 and
`
`42.304(a), that the ‘282 patent meets the definition of a covered business method
`
`patent. The ‘282 patent claims are directed to a technological invention, not a
`
`method or corresponding apparatus used in the practice, administration or
`
`management of a financial product or service, and Petitioner has failed to meet its
`
`burden of showing otherwise. Pet. 11-17. See Section II(A) below.
`
`Second, the sole basis for Petitioner’s challenge is that the claims are not
`
`patent eligible under 35 U.S.C. § 101. Pet. 21-31. But § 101 is not a ground
`
`“specified” in Part II of Title 35 as a “condition of patentability,” as required by
`
`§ 321(b), and, thus, it is not a permitted ground for instituting a covered business
`
`method review under 35 U.S.C. § 321(b). The only conditions of patentability
`
`specified in Part II are those found in §§ 102 and 103. See the express language of
`
`Part II, Title 35 U.S.C. See Section II(B) below.
`
`
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`1
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`Case CBM2013-00017
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`Third, Petitioner has failed to meet the threshold burden set forth in 35
`
`U.S.C. § 324(a) for “Institution of post grant review.” Volusion’s petition fails to
`
`show that it is more likely than not that at least one of claims 1-23 of the ‘282
`
`patent is unpatentable under 35 U.S.C. § 101. See Section II(C) below.
`
`II.
`
`STATEMENT OF REASONS WHY NO POST-GRANT REVIEW
`SHOULD BE INSTITUTED UNDER 35 U.S.C. § 3241
`Volusion’s petition for covered business method patent (“CBM”) review of
`
`claims 1-23 of the ‘282 patent should be denied because (1) the ‘282 patent is not a
`
`“covered business method patent,” (2) § 101 is not a permitted ground on which
`
`the requested CBM review can be instituted, and (3) the information presented in
`
`Volusion’s petition does not demonstrate that any of the challenged claims is
`
`unpatentable, as discussed in detail below.
`
`A. The ‘282 Patent Is Not A “Covered Business Method Patent”
`Volusion’s petition for post-grant review of the ‘282 patent under AIA § 18
`
`should be denied because the ‘282 patent is not a CBM patent as defined by
`
`
`1 Petitioner did not include a statement of material facts in support of its petition.
`Accordingly, Patent Owner has not included a separate statement identifying
`material facts in dispute. In accordance with 35 U.S.C. § 323, this response is
`“preliminary” and Patent Owner reserves the right, should the petition be granted,
`to dispute in Patent Owner’s Response any fact alleged to be material by
`Petitioner, and to provide further material facts in support of Patent Owner’s
`position.
`
`
`
`2
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`Case CBM2013-00017
`
`§18(d). A CBM patent is “a patent [for a non-technological invention] that claims
`
`a method or corresponding apparatus for performing data processing or other
`
`operations used in the practice, administration, or management of a financial
`
`product or service...” AIA § 18(d)(1) (emphasis added); see also 37 C.F.R.
`
`§ 42.301. The ‘282 patent does not meet this definition for two independent
`
`reasons: first, the ‘282 patent is directed to a technological invention, and second,
`
`the ‘282 patent does not claim any method or apparatus for performing data
`
`processing or other operations used in the practice, administration, or management
`
`of a financial product or service.
`
`1.
`
`U.S. Patent No. 6,834,282
`a.
`
`The Novel and Unobvious Technological
`Features of The Challenged Claims (Claims 1-
`23)
`Volusion’s petition challenges the “patentability”2 of claims 1-23 of the ‘282
`
`patent under 35 U.S.C. § 101. Independent claim 1, directed to software, reads as
`
`follows:
`
`1. A hierarchy for representing a plurality of items stored in a
`database, said hierarchy comprising:
`
`a plurality of nodes each representative of a subset of the
`items; and wherein:
`
`
`2 35 U.S.C. § 101 actually concerns patent-eligibility; for the reasons discussed
`herein, patent eligibility is not a condition of patentability.
`
`
`
`3
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`Case CBM2013-00017
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`each of the nodes is a child of one other node, except for a
`root node, which is a child of no other node and is an
`ancestor of all of the nodes;
`
`a first portion of the nodes each specify one or more
`constraints defining a scope of the subset of items
`represented by each of the first portion relative to their
`parent node; and
`
`a second portion of the nodes specify no constraints, each of
`the second portion establishing a logical grouping defining a
`scope of the subset of the items represented by each of the
`second portion.
`
`‘282 patent, claim 1 (emphasis added).
`
`Claims 2-10 depend (directly or indirectly) from claim 1, and add the
`
`following limitations:
`
`• wherein the nodes of the second portion have one or more
`child nodes, each representative of some portion of the
`subset items that are logically grouped (claim 2 (emphasis
`added));
`
`• 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 (claim 3
`(emphasis added));
`
`• wherein the aggregation of any constraints comprises a
`logical ANDing of all of the constraints aggregated (claim 4
`(emphasis added));
`
`• wherein the aggregation of constraints comprises a search
`rule that includes all of the items that meet the aggregation
`of constraints (claim 5 (emphasis added));
`
`• wherein: a third portion of the nodes are leaf nodes, each of
`the leaf nodes having no children; and said hierarchy
`operable to determine the aggregation of constraints and to
`
`
`
`4
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`Case CBM2013-00017
`
`generate the search rule for each leaf node in response to
`activation of the leaf node (claim 6 (emphasis added));
`
`• wherein the constraints comprise one or more permissible
`values of one or more attributes of the items (claim 7
`(emphasis added));
`
`• wherein the attributes and attribute values are stored with the
`items in the database (claim 8 (emphasis added));
`
`• wherein each of the nodes specifies a unique label and a list
`of the unique labels of its children (claim 9); and
`
`• wherein one or more of the nodes specifies a set of display
`data (claim 10).
`
`Independent claim 11, directed to a method, reads as follows:
`
`11. A method of representing a plurality of items in a database
`hierarchically, each of the items associated with one or more
`attributes, each of the attributes having one or more values,
`said method comprising:
`
`
`
`apportioning the plurality of items into subsets;
`
`representing each of the subsets with a node in a hierarchy, each
`of the nodes being a child of one other node, except for a root
`node, which is a child of no other of the nodes and is an
`ancestor of all of the nodes in the hierarchy;
`
`specifying one or more constraints for each of a first portion of
`the nodes, the constraints defining a scope of the subset of items
`represented by each of the first portion relative to their parent
`node; and
`
`establishing a logical grouping of the items for a second
`portion of the nodes, the logical grouping defining a scope of
`the subset of items represented by each of the second portion of
`nodes, no constraints being specified for any of the second
`portion of the nodes.
`
`‘282 patent, claim 11 (emphasis added).
`
`
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`5
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`Case CBM2013-00017
`
`Claims 12-20 depend (directly or indirectly) from claim 11, and add the
`
`same additional limitations as dependent claims 2-10.
`
`Independent claim 21, also directed to a method, reads as follows:
`
`21. A method of browsing items stored in a database using a
`hierarchy, each of the items associated with one or more
`attributes, each of the attributes having one or more values,
`said method comprising:
`
`apportioning the plurality of items into subsets;
`
`representing each of the subsets with a node in a hierarchy, each
`of the nodes being a child of one other node, except for a root
`node, which is a child of no other of the nodes and is an
`ancestor of all of the nodes in the hierarchy;
`
`specifying one or more constraints for each of a first portion of
`the nodes, the constraints defining a scope of the subset of items
`represented by each of the first portion; and
`
`establishing a logical grouping of the items for a second
`portion of the nodes, the logical grouping defining a scope of
`the subset of items represented by each of the second portion of
`nodes, no constraints being specified for any of the second
`portion of the nodes;
`
`displaying said hierarchy on a computer terminal, wherein each
`of said nodes are operative to be activated by selecting the
`node;
`aggregating the constraints specified by a leaf node and its
`ancestors in response to selection of one of the leaf nodes;
`forming a search rule from the aggregation that includes all
`items that meet the constraints;
`initiating a search of the database in accordance with the
`search rule; and
`returning to the terminal a list of the items that meet the
`constraints.
`
`6
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`Case CBM2013-00017
`
`‘282 patent, claim 21 (emphasis added).
`
`Claims 21-23 depend (directly or indirectly) from claim 21, and add the
`
`following limitations:
`
`• wherein the terminal is connected to the database
`over a network (claim 22) (emphasis added); and
`
`• wherein the network is the Internet (claim 23)
`(emphasis added).
`
`Each claim requires the use of hardware and software—i.e., a data storage
`
`device for the computer database storing items and software for representing
`
`and/or browsing items stored in the database. Each claim includes novel and
`
`unobvious technological software limitations for representing and/or browsing the
`
`items stored in the database—specifically, nodes “specifying one or more
`
`constraints” and nodes “establishing a logical grouping.” 3 Some dependent claims
`
`recite additional technological elements: search rules, aggregation of constraints
`
`(in response to selection of nodes), attribute values stored in a database, nodes that
`
`
`3 The novelty and nonobviousness of the claims under §§ 102 and 103 has not been
`challenged and thus their validity under these sections must be presumed. See 35
`U.S.C. § 282. Moreover, the novel and unobvious technological features
`highlighted here are exemplary and their identification is not meant to serve as an
`exhaustive list of all of the novel and unobvious technological features of the
`claims of the ‘282 patent.
`
`
`
`7
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`Case CBM2013-00017
`
`are operative to be activated, and computer terminals connected over a network,
`
`like the Internet.
`
`b.
`The ‘282 patent explains, in the “Background of the Invention,” the need for
`
`Problem Solved by the ‘282 Patent
`
`the invention claimed therein:
`
`One issue confronted by sellers offering goods and services for
`sale over the Internet, whether through electronic catalogs or a
`web site, is how to present their product information to a buyer.
`
`***
`
`One way sellers have been known to hierarchically organize
`their catalog data for browsing is in accordance with a
`“classification-category-vendor” hierarchy. … At the
`classification level, catalog items are split into some
`predetermined number of classes each represented by a unique
`class label. Each class node is then spit at the category level
`into some number of category nodes equal to the number of
`predetermined categories established under each class. The
`category nodes are then split at the vendor level to create some
`number of vendor nodes…
`
`***
`
`[This] approach is extremely inflexible because the
`expressiveness of the hierarchy is limited to that which has
`been preordained. Even if the depth of the hierarchy is
`expanded to include more levels of specificity, the navigational
`path by which each item is ultimately browsed is fixed, and so
`are the rules by which the hierarchy is organized. Put another
`way, each item can be browsed through exactly one path
`through the hierarchy because the manner in which the
`hierarchy is organized is predetermined.
`
`Thus, it would be desirable to provide a more flexible and
`expressive browse hierarchy that permits the seller the freedom
`
`
`
`8
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`

`Case CBM2013-00017
`
`to organize the browsing hierarchy in an arbitrary manner.
`Such a hierarchy would even permit a user to browse the
`catalog data through multiple navigational paths to arrive at the
`same item because multiple instances of an item would be
`permitted to reside in the hierarchy.
`
`‘282 patent, col. 1, l. 52-col. 3, l. 35.
`
`c.
`
`Detailed Description of the Claimed Novel and
`Unobvious Technological Features of ‘282
`Patent
`
`The ‘282 patent specification provides an explanation of exemplary
`
`embodiments of the claimed invention, including a description of the structure and
`
`methodology. In the “Overview” section, the specification describes novel
`
`features of the software for “hierarchically representing items in a database,” ‘282
`
`patent, col. 4, ll. 44-45:
`
`The seller can develop the hierarchy to be arbitrarily expressive
`and provide any number of navigational paths by which the
`buyer can navigate the seller’s catalog to reach a particular item
`or set of items in the catalog.
`
`***
`
`Each node in the hierarchy is associated with a unique label.
`Each node also contains a list of labels for each of its child
`nodes (if any). Optionally, each node is associated with
`marketing text and image data, and may specify one or more
`constraints that require all items falling under the node to have
`specific values for certain item attributes. The constraints
`specified at a node are logically ANDed together and are in
`effect logically ANDed with the constraints specified (if any)
`by all of the nodes that are its ancestors. Thus, any items that
`fall under a particular node in the hierarchy must meet all of the
`constraints specified by the node itself, but also any constraints
`that are specified by its ancestors. Put another way, each node
`9
`
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`

`Case CBM2013-00017
`
`inherits the constraints of its ancestors. If a node does not
`specify any constraints, then it in effect specifies a logical
`grouping of items that could not otherwise be specified by an
`ANDed set of constraints. A logical grouping of items under a
`node is the equivalent of an implied logical ORing of
`constraints.
`
`‘282 patent, col. 4, l. 47-col. 5, l. 20.
`
`With regard to structure, the specification refers to Figure 2, copied below.
`
`The specification describes the structure as follows:
`
`
`
`One embodiment of the invention is presented with reference to
`FIG. 2. Catalog database 10 contains the most recent version of
`the catalog data assembled and maintained by the seller. The
`catalog data stored in the database 10 is accessed through
`queries made to database server 9.
`
`***
`
`The set of nodes and the arbitrary rules used to define the scope
`of the subset of catalog data to be included at each node of the
`browse hierarchy is created by seller-authorized users through
`terminals 38 coupled to application server 8. The constraints
`are physically stored with (although maintained independently
`from) the catalog data in database 10. For each leaf node
`activated during the browse process, the application aggregates
`
`
`
`10
`
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`

`Case CBM2013-00017
`
`the constraints specified by the leaf node and all of its ancestors
`into a single “include” rule. The application then derives a
`database search query from the “include” rule and
`communicates the query to the database server 9. The database
`server 9 executes the query and retrieves the subset of the
`catalog data that meets the aggregated constraints for the leaf
`node activated during the browsing process. The database
`server 9 returns the subset of the catalog information in the
`form of a list of item SKUs, along with any ancillary marketing
`text or image data associated with each of the returned SKUs.
`
`‘282 patent, col. 5, l. 55- col. 6, l. 31.
`
`The specification also describes the methodology, which is essentially how
`
`the constraints and logical groupings work. For example:
`
`In one embodiment, the general form of the constraints
`specified at each node might be:
`
`All items where:
`
`
`where ATT_Name is an attribute identifier, op is an operator
`{=,>,<, “starts with” or “contains”}, ATT_Val is the value of
`the attribute, and the AND is an implicit operator between all of
`the constraints specified by the node.
`
`‘282 patent, col. col. 7, ll. 3-17.
`
`The hierarchy depicted in Figure 3 explains how the constraints and logical
`
`groupings work. Figure 3 is shown below.
`
`
`
`11
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`

`

`Case CBM2013-00017
`
`The specification explains:
`
`
`
`At the top of the hierarchy is a root node 142 … The next level
`of the example hierarchy of FIG. 3 includes the logical
`grouping of nodes labeled “PCs” 143, “Peripherals” 155,
`“Software” 154 and “Clearance Specials” 157… For nodes such
`as PCs 143 and Software 154, if these labels also represent
`product types for example, then the items that fall under them
`can be specified by node constraints such as: “all items having
`PRODUCT TYPE=PC” and “all items having PRODUCT
`TYPE=Software” respectively. For a node such as Clearance
`Specials 157, however, there may be no such attribute ascribed
`to any items in the database. Thus, the nodes that fall under it
`will themselves be a logical grouping.
`
`‘282 patent, col. 7, l. 39 – col. 8, l. 20.
`
`Further, with reference to Figure 3, the specification provides an example of
`
`how the invention aggregates constraints:
`
`[I]n the case of the example hierarchy of FIG. 3, the rule
`defining of all items that fall under the leaf node “Compaq” 153
`with its aggregated constraints could be expressed as:
`
`
`
`12
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`

`Case CBM2013-00017
`
`An example of aggregated node constraints by which to include
`all software that is A manufactured by Microsoft Corporation
`and is related to “Windows” under leaf node 159 could be
`expressed as follows:
`
`‘282 patent, col. 8, ll. 32-60.
`
`
`
`2.
`
`The ‘282 Patent Claims a Technological Invention, Which Is
`Excluded From CBM Review
`
`The Board lacks jurisdiction under § 18 of the AIA over this proceeding
`
`because the ‘282 patent claims a technological invention, which is excluded from
`
`CBM review. The claimed subject matter involves novel and unobvious software
`
`features for flexibly representing and/or browsing data stored electronically in a
`
`computer database. (‘282 patent, col. 4, l. 44-col. 5, l. 54.)
`
`While a patent is not “ineligible for review simply because it recites
`
`software elements or has been reduced to a software program” 157 Cong. Rec.
`
`S5431 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl), the technological invention
`
`exclusion is intended to exclude patents directed to novel software.
`
`[I]n order to fall within the technological-invention exclusion,
`the invention must be novel as software. If an invention recites
`software elements, but does not assert that it is novel as
`software, or does not colorably appear to be so, then it is not
`ineligible for review simply because of that software element.
`But an actual software invention is a technological invention,
`and is not subject to review under section 18.
`13
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`Case CBM2013-00017
`
`Id. (emphasis added).
`
`According to the Office, the two requirements of a technological invention
`
`are: (1) the claimed subject matter as a whole must recite a technological feature
`
`that is novel and unobvious over the prior art; and (2) it must solve a technical
`
`problem using a technical solution. 37 C.F.R. § 42.301(b).
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`For at least the reasons set forth below, claims 1-23 of the ‘282 patent satisfy
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`the two technological invention requirements, and Volusion has failed to meet its
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`burden of showing otherwise.
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`• Novel and unobvious technological feature: Novel and
`unobvious software elements, like interrelated nodes in a hierarchy
`that have related constraints that can be aggregated or logical
`groupings, enable the representing of electronic data stored in a
`computer database for browsing by users to find the items and/or
`information they are looking for in a database more efficiently.
`See ‘282 patent, col. 3, ll. 44-67.
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`• Technical Problem: The conventional approach for online
`catalogs and websites is to use software that presents items in a
`way that mimics paper catalogs. The problem with this approach
`is that the software is not flexible, and the only way for users to
`access some items is by clicking through all of the pages that come
`beforehand. Often times, the buyer loses interest before finding
`the item/information being sought. See ‘282 patent, col. 1, ll. 52-
`67.
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`Case CBM2013-00017
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`• Technical Solution: The claimed software provides for a more
`flexible representation of data stored in a computer database and
`interface involving a set of nodes, with associated constraints and
`logical groupings, that allows users (e.g., sellers and buyers) to
`represent data stored electronically in a computer database and
`browse items more efficiently, and without clicking through a
`predetermined set of pages or items that come beforehand. See
`‘282 patent at col. 6, ll. 14-31.
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`There are several problems with Volusion’s analysis of “technological
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`invention.”
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`First, Volusion’s petition completely ignores the extensive teachings in the
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`‘282 patent specification, which detail how the claimed invention solved the
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`technical problems associated with browsing online catalogs and websites by using
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`the novel software features—interrelated nodes in a hierarchy specifying one or
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`more constraints and establishing a logical grouping, both of which create
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`flexibility. ‘282 patent, col. 4, l. 44-col. 9, l. 44. Volusion’s petition characterizes
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`the claims as being directed to the concept of a hierarchy generally, ignoring all of
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`the specific limitations of the claims that show them to be technological. However,
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`the claimed subject matter of each of the challenged claims requires substantially
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`more than an undefined, abstract hierarchy, which is discussed in the background
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`section of the ‘282 patent and acknowledged as in the prior art. ‘282 patent, col. 2,
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`l. 1-col. 3, l. 29; Figs. 1(a)-(c).
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`Case CBM2013-00017
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`Second, Volusion improperly tries to “piggyback” on the PTAB’s yet-to-be-
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`appealed decision that U.S. Patent No. 3,553,350 (“the ‘350 patent”) is a CBM
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`patent by arguing without basis that the same is true for the ‘282 patent. SAP
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`America, Inc. v. Patent of Versata Dev. Group, Inc., CBM2012-00001, Decision –
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`Institution of Covered Business Method Review – 37 C.F.R. § 42.208 (PTAB Jan.
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`9, 2013) (“SAP Institution Decision”). Volusion improperly oversimplifies both
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`the ‘282 and the ‘350 patents, mischaracterizing both as “general purpose
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`computers and the use of hierarchies to organize product data.” Pet. 13. The
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`Federal Circuit has repeatedly rejected this approach—most recently in
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`Ultramercial, Inc. v. Hulu, LLC, No. 2010-1544, 2013 U.S. App. Lexis 12715, at
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`*22 (Fed. Cir. June 21, 2013) (“The Court has long-recognized that any claim can
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`be stripped down, simplified, generalized or paraphrased to remove all of its
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`concrete limitations, until at its core, something that could be characterized as an
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`abstract idea is revealed. A court cannot go hunting for abstractions by ignoring
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`the concrete, palpable, tangible limitations of the invention the patentee actually
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`claims.”).
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`Third, Petitioner improperly “cherry picks” words from the claims like
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`“database” and “computer terminal,” Pet. 14, and fails to address all of the
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`limitations in the claims, which demonstrate that they are indeed technological
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`inventions. Claims 1-23 as a whole elaborate on how the software works (claims
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`16
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`Case CBM2013-00017
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`1-10) and how it works in connection with the user’s computer, server(s) and
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`database(s) (claims 11-23), such that users can navigate information in an efficient
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`and effective manner.
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`Fourth, Petitioner incorrectly argues that claim 1 can be practiced by a
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`human being with a pen and paper and “nothing in these claims requires the use of
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`a computer.” Pet. 13-14.