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 MOTION FOR
`REHEARING UNDER 37 C.F.R. § 42.71(d)
`
`
`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 MOTION FOR
`REHEARING UNDER 37 C.F.R. § 42.71(d)
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... ii
`
`LIST OF EXHIBITS................................................................................................ iv
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`BACKGROUND .............................................................................................1
`
`A.
`
`B.
`
`Decision Regarding CBM Review of the ’282 Patent ..........................1
`
`The Additional Elements of Claim 21 Highlighted in the
`Decision Merely Require Searching a Database...................................3
`
`III. ARGUMENT...................................................................................................6
`
`A.
`
`B.
`
`The Petition Explicitly Addressed the Additional Search
`Required by Claims 21-23.....................................................................6
`
`Claims 21-23 are Invalid under § 101...................................................7
`
`1.
`
`2.
`
`Claims 21-23 add insignificant post solution activity to
`an abstract idea............................................................................8
`
`Claims 21-23 Do Not Satisfy the Machine-or-
`Transformation Test..................................................................10
`
`IV. CONCLUSION..............................................................................................14
`
`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. Guideware Software Inc.,
`691 F. Supp. 2d 577 (D. Del. 2010) ..............................................................12
`
`Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
`687 F.3d 1266, 103 U.S.P.Q.2d 1425, 1433 (Fed. Cir. 2012).....................8, 9
`
`Bilski v. Kappos,
`130 S. Ct. 3218, 95 U.S.P.Q.2d 1001 (2010) ............................................8, 10
`
`CLS Bank Int’l v. Alice Corp.,
`717 F.3d 1269, 106 U.S.P.Q.2d 1696 (Fed. Cir. 2013) (en banc) ............9, 10
`
`CyberFone Sys., LLC v.Cellco P’ship ,
`885 F. Supp. 2d 710 (D. Del. 2012) ..............................................................11
`
`CyberSource v. Retail Decision, Inc.,
`654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011)...................................13
`
`Ex Parte Choo,
`No. 2009-004228, 2010 WL 2985362 (B.P.A.I., July 28, 2010)..................14
`
`Ex Parte Mahadevan,
`No. 2009-004228, 2010 WL 1064492 (B.P.A.I., March 23, 2010) ..............14
`
`Ex Parte Vogel,
`No. 2010-005339, 2011 WL 6012447 (B.P.A.I., Nov. 21, 2011).................14
`
`Fort Props., Inc. v. Am. Master Lease, LLC,
`671 F.3d 1317, 101 U.S.P.Q.2d 1785 (Fed. Cir. 2012).................................11
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972).........................................................................................11
`
`In re Bilski,
`545 F.3d 943, 88 U.S.P.Q.2d 1035 (Fed. Cir. 2008)........................ 10, 11, 13
`
`In re Ferguson,
`558 F.3d 1359, 90 U.S.P.Q.2d 1035 (Fed. Cir. 2009)...................................11
`
`ii
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`In re Grams,
`888 F.2d 835 (Fed. Cir. 1989) .........................................................................9
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012) ....................................... 7, 8, 9
`
`Parker v. Flook,
`437 U.S. 584 (1978).........................................................................................7
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 1335, 107 U.S.P.Q.2d 1193 (Fed. Cir. 2013)...................... 9, 10, 11
`
`Other Authorities
`
`35 U.S.C. § 101................................................................................................ passim
`
`iii
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`LIST OF EXHIBITS
`
`Volusion Exhibit 1014: Decision, Institution of Covered Business Method
`Patent Review of U.S. Patent No. 7,426,481, Case No.
`CBM2013-00018, Paper No. 8
`
`Volusion Exhibit 1015: Certificate of Service
`
`iv
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
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`I.
`
`INTRODUCTION
`
`This motion seeks reconsideration of the decision not to institute a Covered
`
`Business Method (“CBM”) Review of claims 21-23 of U.S. Patent No. 6,834,282
`
`(Paper No. 8 (“Decision”)). The Decision found that Petitioner’s Petition for CBM
`
`Review did not adequately address three additional steps in method claims 21-23
`
`that are not found in claims 1-20, for which the CBM Review was instituted.
`
`Contrary to the Decision, the Petition expressly addressed these additional steps,
`
`which merely add the requirements of building a search query and executing that
`
`query to the abstract idea of generating and browsing a hierarchy found in claims
`
`1-20. Petitioner respectfully submits that the Board erred by misapprehending or
`
`overlooking these arguments and requests that the Board reconsider its Decision
`
`not to institute a review of these claims and find that claims 21-23 are unpatentable
`
`under 35 U.S.C. § 101.
`
`II.
`
`BACKGROUND
`
`A.
`
`Decision Regarding CBM Review of the ’282 Patent
`
`Versata Software, Inc. and Versata Development Group, Inc. sued Volusion,
`
`Inc. in the Western District of Texas on September 25, 2012, alleging that
`
`Volusion’s e-commerce software infringes the claims of U.S. Patent No.
`
`6,834,282, among others. On April 23, 2013, Volusion petitioned for CBM
`
`Review of the ’282 Patent, arguing that the claims of the patent were not drawn to
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`1
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`patent-eligible subject matter and were thus invalid under Section 101 (see Paper
`
`No. 1 (“Petition”)). A CBM Review was instituted as to claims 1-20 of the ’282
`
`patent, but not claims 21-23 (Decision at 17).1
`
`The Decision states that claims 1-10 are directed to a hierarchy, which
`
`“constitutes no more than a conceptual framework,” and thus more likely than not
`
`are not patent-eligible (id. at 12-14). The Decision similarly states that method
`
`claims 11-20 more likely than not are not patent eligible because the claims are
`
`“drawn to the abstract idea of representing a plurality of items in a database
`
`hierarchically” (id. at 14-15).
`
`In deciding not to review claims 21-23, the Decision finds that the first four
`
`steps of method claim 21 are identical to claim 11, but states that the additional
`
`steps of “aggregating, “forming,” and “initiating” are limited to machine operation
`
`and thus distinguishable from claim 11 (id. at 16). The Decision acknowledges
`
`that Petitioner argued that additional elements of claims 21-23 merely added the
`
`requirement that a database be searched and a hierarchy be displayed on a
`
`computer, but then finds that the Petitioner failed to address all of the requirements
`
`of the claims (id. at 16). Specifically, the Decision states that Petitioner failed to
`
`1 A petition for CBM Review of U.S. Patent 7,426,481 was also filed by Petitioner,
`and a decision instituting the CBM Review of the claims of the ’481 Patent issued
`on the same day as the Decision (see generally Volusion Exhibit 1014 (“481
`Decision”)).
`
`2
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`address the referenced additional elements of claim 21, which include “at least the
`
`machine-based formation of a search rule and the searching of a database using the
`
`search rule” (id. at 16).
`
`B.
`
`The Additional Elements of Claim 21 Highlighted in the
`Decision Merely Require Searching a Database
`
`The “aggregating, “forming,” and “initiating” steps of claim 21, referenced
`
`in the Decision and italicized below, describe building a search query and
`
`executing that search:
`
`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;
`
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`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.
`
`(Ex. 1001 at Claim 21, 12:19-52). The “aggregating” and “forming” steps build
`
`the search query, and the “initiating” step executes that query.
`
`For example, the “aggregating” step requires that the constraints of the
`
`selected node and its ancestors be aggregating by, for example, combining
`
`constraints using a logical AND operation, which is a mathematical function (Ex.
`
`10012 at 6:20-25, 7:18-35). Using the example in the ’282 patent, the
`
`“aggregating” step is performed when the “Compaq” node 152 of Figure 3 is
`
`selected (Ex. 1001 at 8:21-32). This selection causes the constraints for the “Intel
`
`Inside” node, “High Performance” node, and “PCs” node illustrated below be
`
`combined:
`
`2 Volusion Exhibit 1001 (U.S. Patent No. 6,834,282) was previously filed with the
`Petition (Paper No. 1).
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`4
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`(id. at FIG. 3). The “forming” step then builds a search rule that includes all items
`
`that satisfy the constraints, e.g., converts the aggregated constraints into a query
`
`(id. at 8:33-47 (showing the form of the query)). The search rule, by itself, is
`
`merely a description of the parameters of a search that could be performed, and
`
`thus could be written using pen and paper as illustrated by the fact that an example
`
`of a written version of the query or search rule is provided in the specification (id.).
`
`Thus, contrary to the Decision, the ’282 patent illustrates that the
`
`“aggregating” and “forming” steps necessary to build the query can be performed
`
`by hand. The only step that must be performed by a computer is the final step of
`
`“initiating” the search of the database using the query (id. at 6:25-28). The
`
`additional steps of claims 21-23 highlighted by the Decision thus require nothing
`
`more than building a search query and executing that search query against a
`
`conventional database using any general purpose computer.
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`III. ARGUMENT
`
`A.
`
`The Petition Explicitly Addressed the Additional Search
`Required by Claims 21-23
`
`The Petition specifically addressed the additional elements of claims 21-23
`
`in challenging the patentability of those claims. For example, the Petition argued
`
`that claim 21 was similarly directed to the abstract idea of “browsing and display
`
`of the claimed hierarchies” (see Decision at 16), but then explained that the
`
`additional requirement that a database be searched adds “nothing more to this
`
`abstract concept than the use of a general purpose computer” (Petition at 25). In
`
`other words, the browsing of the hierarchy would include the selection of a node,
`
`which would trigger the additional search required by claim 21. This additional
`
`search is a routine, conventional activity performed by a general purpose computer
`
`and thus is insufficient to impart patentability to the claims (id.).
`
`The Petition also stated that claims 21-23 failed the machine-or-
`
`transformation test because (i) claims 21-23 are not limited in any way by the type
`
`of computer used (Petition at 27-28); (ii) use of a general purpose machine to
`
`“collect and organize data” is not sufficient to impart patentability (Petition at 28-
`
`29), and (iii) “searching of data in [a] catalog” does not constitute a transformation
`
`(Petition at 30). Thus, contrary to the Decision, the Petition did not fail to address
`
`the additional limitations of claim 21-23.
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`The Board thus erred by overlooking or misapprehending the arguments set
`
`forth in the Petition. To the extent the Decision did consider the arguments noted,
`
`Petitioner respectfully submits that, as set forth in more detail below, the
`
`Decision’s conclusion is inconsistent with Supreme Court and Federal Circuit
`
`authority and its own decisions finding that the addition of a step requiring a search
`
`of data using a general purpose computer is insufficient to meaningfully limit the
`
`claims.
`
`B.
`
`Claims 21-23 are Invalid under § 101
`
`The Decision erroneously found that the additional elements of claim 21–
`
`the “aggregating, “forming,” and “initiating” steps–sufficiently altered the scope of
`
`the claims to convert an otherwise invalid claim to a claim directed to patentable
`
`subject matter. As discussed above, the “aggregating” and “forming” steps can be
`
`performed by hand and are merely preliminary steps to the execution of a search.
`
`The search, which is performed in the “initiating” step, is a conventional activity
`
`that is routinely performed and implemented using any conventional computer
`
`hardware (Ex. 1001, Col. 10:25-36). Claims 21-23 thus fail to make the abstract
`
`idea of representing items hierarchically patent-eligible because the additional
`
`search limitations do not add “significantly more” to that abstract idea (Petition at
`
`25). Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294,
`
`101 U.S.P.Q.2d 1961, 1966 (2012); Parker v. Flook, 437 U.S. 584, 593-94 (1978).
`
`7
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`Claims 21-23 also fail the machine-or-transformation test, which the Decision
`
`recognizes is a viable tool for assessing patent eligibility under § 101.
`
`Accordingly, claims 21-23 of the ’282 patent are invalid under § 101. Each of
`
`these arguments was presented in the Petition, but are included below to provide
`
`further clarity regarding the particular applicability of those arguments to claims
`
`21-23.
`
`1. Claims 21-23 add insignificant post solution activity to
`an abstract idea.
`
`As discussed in the Petition, if a patent seeks to claim the application of an
`
`abstract idea, there must be an “inventive concept” sufficient to ensure that the
`
`patent amounts to “significantly more” than a patent upon the abstract idea itself.
`
`Mayo, 132 S. Ct. at 1294, 101 U.S.P.Q2d at 1966 (citations omitted). It is not
`
`enough to limit the claim to “a particular technological environment” or to add
`
`“insignificant post solution activity” or “well-understood, routine, conventional
`
`activity.” Bilski v. Kappos, 130 S. Ct. 3218, 3230, 95 U.S.P.Q.2d 1001, 1009
`
`(2010) (citation omitted); Mayo, 132 S. Ct. at 1294, 101 U.S.P.Q2d at 1966 . The
`
`use of a computer “for no more than its most basic function—making calculations
`
`or computations—fails to circumvent the prohibition against patenting abstract
`
`ideas and mental processes.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
`
`Canada (U.S.), 687 F.3d 1266, 1278, 103 U.S.P.Q.2d 1425, 1433 (Fed. Cir. 2012).
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`8
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`Instead, the computer must be “integral to the claimed invention, facilitating the
`
`process in a way that a person making calculations or computations could not.” Id.
`
`As discussed above and illustrated in the ’282 Patent, the “aggregating” and
`
`“forming” steps can be performed using pen and paper and are thus directed to
`
`unpatentable abstract ideas. The addition of the “initiating” step merely adds that a
`
`search be performed based on the query formed in the prior step. As discussed on
`
`page 25 of the Petition, the requirement of a database search is insufficient to
`
`salvage claims 21-23, as the requirement does not add anything more than “well-
`
`understood, routine, conventional activity” to the abstract idea of representing
`
`items hierarchically. See Mayo, 132 S. Ct. at 1294, 101 U.S.P.Q2d at 1966; see
`
`also In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (holding that “data-
`
`gathering” steps cannot make an otherwise nonstatutory claim statutory); Volusion
`
`Ex. 1014 (481 Decision) at 14 (“However, retrieving data from memory based on
`
`search criteria is another thing that general purpose computers do”). Claims 21-23,
`
`like claim 11, are thus directed to an abstract idea and not patent-eligible.
`
`The CLS Bank and Ultramercial opinions that issued after the Petition was
`
`filed do not dictate a different result. CLS Bank and Ultramercial did not alter the
`
`applicability of the prior Supreme Court and Federal Circuit opinions addressed
`
`above and in the Petition because the opinions explicitly state that a claim that does
`
`not, on its own, provide substantial limitations to the claim’s patent-ineligible
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`abstract idea remains unpatentable. See, e.g., CLS Bank Int’l v. Alice Corp., 717
`
`F.3d 1269, 1282-83, 106 U.S.P.Q.2d 1696, 1704-05 (Fed. Cir. 2013) (en banc).
`
`Ultramercial thus should not be read so broadly as to “suggest that adding
`
`recitations of general purpose digital computer structure or function to a claim
`
`renders the claim statutory without further inquiry,” and searching is a function of
`
`a general purpose computer (see Volusion Ex. 1014 (481 Decision) at 15
`
`(discussing Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1350)). For the
`
`reasons stated above and in the Petition, claims 21-23 are directed to an abstract
`
`idea and thus unpatentable.
`
`2. Claims 21-23 Do Not Satisfy the Machine-or-
`Transformation Test
`
`As discussed in the Petition, claims 21-23 also fail the machine-or-
`
`transformation test, which remains a “useful and important clue, an investigative
`
`tool,” for determining whether a claimed invention is patent eligible under § 101
`
`Bilski, 130 S. Ct. at 3227, 95 U.S.P.Q.2d at 1013.
`
`a.
`
`Claims 21-23 do not satisfy the machine prong.
`
`To pass the machine prong of the machine-or-transformation test, patent
`
`claims must be “tied to a particular machine” or a “specific machine or apparatus.”
`
`In re Bilski, 545 F.3d 943, 961-62, 88 U.S.P.Q.2d 1035, 1038 (Fed. Cir. 2008)
`
`(citation omitted). A “machine” is a “concrete thing, consisting of parts, or of
`
`certain devices and combination of devices.” In re Ferguson, 558 F.3d 1359, 1364,
`10
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`90 U.S.P.Q.2d 1035, 1038 (Fed. Cir. 2009) (citation omitted). A court must
`
`examine whether the use of a specific machine imposes meaningful limits on the
`
`claim’s scope or whether the involvement of the machine in the claimed process is
`
`merely an insignificant post-solution activity. In re Bilski, 545 F.3d at 961-62, 88
`
`U.S.P.Q.2d at 1396; Ultramercial, 772 F.3d at 1344, 107 U.S.P.Q.2d at 1200-01.
`
`Where patent claims implicate the use of a machine, but the machine is simply a
`
`general purpose computer, the machine cannot be said to impose any limit on the
`
`claimed methods themselves and, therefore, the claimed methods are not drawn to
`
`a specific machine within the meaning of Bilski. See, e.g., Gottschalk v. Benson,
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`409 U.S. 63, 67 (1972) (invalidating claims that “can be carried out in existing
`
`computers long in use, no new machinery being necessary,” and that “can also be
`
`performed without a computer”); Fort Props., Inc. v. Am. Master Lease, LLC, 671
`
`F.3d 1317, 1323, 101 U.S.P.Q.2d 1785, 1790 (Fed. Cir. 2012) (invalidating claims
`
`“using a computer” because the computer did not “play a significant part in
`
`permitting the claimed method to be performed” (citation omitted)).
`
`Further, as stated in the Petition, courts have specifically held that the use of
`
`general purpose machines to search for or collect and organize data is not sufficient
`
`to impart patentability. See, e.g., CyberFone Sys., LLC v.Cellco P’ship , 885 F.
`
`Supp. 2d 710, 718-719 (D. Del. 2012) (holding that the telephone needed to
`
`perform the claimed step of collecting data was not sufficient to “make the abstract
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`11
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`concepts of sorting and storing data somehow patent-eligible,” because the
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`telephone was not integral to the claimed invention and the claimed organizing
`
`step would be performed by a “general purpose computing device,” which was
`
`likewise insufficient to impart patentability); Accenture Global Servs. GmbH v.
`
`Guideware Software Inc., 691 F. Supp. 2d 577, 597 (D. Del. 2010) (“if the
`
`architecture of the computer is of no import,” the claimed methods are not tied to a
`
`particular machine as required by the machine prong).
`
`As noted in the Petition, claims 21-23 propose a software solution for
`
`searching a database that is not limited by the hardware or the programming or
`
`processing environment used to implement the software-based invention:
`
`In particular, the invention is neither limited by the types of computers
`used as servers, nor the operating systems, web server, or data server
`application software running on such servers. The invention is limited
`neither by the types of user terminals used to connect to the servers,
`nor the type or browser software resident on the terminals. The
`invention is neither limited by the structure of the data as stored in the
`database, nor is it limited by the nomenclature used in identifying data
`types and attributes. The invention does not have to be implemented
`using the Internet, but rather may be implemented over any network,
`using any type of transmission protocol and display formats.
`
`(Ex. 1001, Col. 10:25-36; see also Ex. 1001, Col. 5:60-61; id. at Col. 6:5-8; see
`
`also Petition at 15). Claims 21-23 thus do not require that the search of the items
`
`be performed in an unconventional way and is thus not a “new use of a known
`
`machine” as required by the machine prong (see Volusion Ex. 1014 (481 Decision)
`
`12
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`at 14 (“The search and retrieval of data from memory is substantially the same
`
`process, regardless that different sets of search and target data might represent
`
`different things to human users” and thus “search and retrieval of electronic data
`
`from conventional computer memory in a conventional way is not a ‘new use of a
`
`known machine’”). The use of the general purpose computer to perform the
`
`additional search required by claims 21-23 is incidental to the performance of the
`
`claimed method and fails to impart patentability to the claims, and a contrary
`
`decision is inconsistent with prior decisions of the Board.
`
`b.
`
`The additional elements of claims 21-23 do not
`transform any article.
`
`Finally, the methods of claims 21-23 of the ’282 patent also do not
`
`“transform[] . . . an article into a different state or thing.” In re Bilski, 545 F.3d at
`
`962, 88 U.S.P.Q.2d at 1396. As with the “machine” prong, the transformation
`
`must impose meaningful limits on the execution of the claimed method, i.e., it
`
`“must be central to the purpose of the claimed process.” Id. Method claims 21-23
`
`fail to identify any article that is “transformed” when the claimed methods are
`
`performed.
`
`Specifically, as discussed in the Petition, searching data in the catalog does
`
`not constitute a transformation under the transformation prong, as the search is
`
`simply a mathematical calculation that aids in the gathering of certain data
`
`13
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`(Petition at 30-31). See, e.g., CyberSource Corp. v. Retail Decision, Inc., 654 F.3d
`
`1366, 1370, 99 U.S.P.Q.2d 1690, 1694 (Fed. Cir. 2011) (holding that “mere [data-
`
`gathering] step[s] cannot make an otherwise nonstatutory claim statutory” (citation
`
`omitted)); see also Ex Parte Vogel, No. 2010-005339, 2011 WL 6012447, at *4
`
`(B.P.A.I., Nov. 21, 2011) (claimed “computer-based search is insignificant extra-
`
`solution activity in that it is merely the addition of a data-gathering step which
`
`cannot convert the unpatentable method to patentable subject matter” (emphasis,
`
`quotation marks and citation omitted)), Ex Parte Choo, No. 2009-004228, 2010
`
`WL 2985362, at *4 (B.P.A.I., July 28, 2010) (the steps of receiving a request and
`
`searching a database do not transform an article into a different state or thing); Ex
`
`Parte Mahadevan, No. 2009-004228, 2010 WL 1064492, at *5 (B.P.A.I., March
`
`23, 2010) (method of searching which “merely produce[s] search results from a
`
`mathematical algorithm,” fails the machine-or-transformation test and is not
`
`patent-eligible under 35 U.S.C. § 101). Because claims 21-23 of the ’282 patent
`
`do not transform any object and instead merely describe the manipulation of data,
`
`they fail the “transformation” aspect of the machine-or-transformation test, and
`
`should be held unpatentable under § 101.
`
`IV. CONCLUSION
`
`Because claims 21-23 of the ’282 patent claim abstract ideas without adding
`
`significantly more, and because they are not tied to a particular machine and do not
`
`14
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`transform articles, claims 21-23 are invalid under 35 U.S.C. § 101. Petitioner thus
`
`respectfully request that the Board reconsider its Decision and institute a CBM
`
`Review of claims 21-23.
`
`Dated: November 7, 2013
`
`Respectfully submitted,
`
`/Keith E. Broyles/
`Keith E. Broyles (Reg. No. 42,365)
`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.
`
`15
`
`
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