Paper 17
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 5, 2013
`
`
`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 B1
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 5, 2013
`
`
`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 B1
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`CBM2013-00017
`Patent 6,834,282 B1
`
`
`INTRODUCTION
`In a Decision entered October 24, 2013 (Paper 8, “Decision”), the
`Board granted Petitioner’s (Volusion, Inc.’s) request for covered business
`method (CBM) patent review as to claims 1-20 of U.S. Patent No. 6,834,282
`B1. However, we denied the request as to claims 21-23. Petitioner has filed
`a timely motion for rehearing (Paper 10) of the denial of the request as to
`claims 21-23.
`A request for rehearing must identify specifically all matters the party
`believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`When rehearing a decision on petition, a panel reviews the decision for an
`abuse of discretion. 37 C.F.R. § 42.71(c).
`For the reasons that follow, the request for rehearing is denied.
`
`
`DISCUSSION
`In the Decision, the Board determined that Petitioner had
`demonstrated that it is more likely than not that claims 1 through 20 of the
`’282 patent are directed to non-statutory subject matter and, thus,
`unpatentable under 35 U.S.C. § 101. With respect to the remaining claims
`that were challenged, namely, claims 21 through 23, we stated:
`The first four steps of method claim 21 are identical in
`substance to the steps of method claim 11 -- a claim that we
`have determined to be more likely than not drawn to patent-
`ineligible subject matter. However, claim 21 recites additional
`steps, including: “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; [and] initiating a search of
`the database in accordance with the search rule.” In the context
`of claim 21, we read each of the “aggregating,” “forming,” and
`
`2
`
`
`
`CBM2013-00017
`Patent 6,834,282 B1
`
`
`“initiating” steps as being limited to machine operation. That
`is, claim 21 also provides the steps of “displaying said
`hierarchy on a computer terminal, wherein each of said nodes
`are operative to be activated by selecting the node,” and
`“returning to the terminal a list of the items that meet the
`constraints.” Thus, claim 21, unlike claim 11, is not a method
`that can be performed entirely in the human mind or by human
`activity.
`
`Decision 15-16.
`Consequently, we denied the petition as to claims 21 through 23
`because Petitioner failed to address all the requirements of those claims. Id.
`Base claim 21 is not directed to an abstract “browsing and display of the
`claimed hierarchies,” as alleged in the Petition, but includes at least the
`machine-based formation of a search rule and the searching of a database
`using the search rule. Id.
`Petitioner implicitly disagrees with our claim interpretation that the
`claim 21 steps of “aggregating,” “forming,” and “initiating” are limited to
`machine operation. Petitioner refers to portions of the written description of
`the ’282 patent and alleges that the “aggregating” and “forming” steps can
`be performed by hand. Paper 10 at 4-5. Petitioner alleges that 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.
`However, Petitioner again fails to address all the requirements of base
`claim 21. In particular, the claim recites “aggregating the constraints
`specified by a leaf node and its ancestors in response to selection of one of
`the leaf nodes” (emphasis added), where the claim also sets forth,
`immediately prior, the step of “displaying said hierarchy on a computer
`terminal, wherein each of said nodes are operative to be activated by
`
`3
`
`
`
`CBM2013-00017
`Patent 6,834,282 B1
`
`selecting the node” (emphasis added). Petitioner does not persuade us that
`we misapprehended or overlooked anything in concluding that claim 21
`requires that all of the “aggregating,” “forming,” and “initiating” steps be
`performed by a machine.
`Petitioner admits that browsing of the hierarchy would include the
`selection of a node, which would trigger the additional search required by
`claim 21. Paper 10 at 6. Although the “additional search” might represent a
`routine, conventional activity performed by a general purpose computer
`(id.), Petitioner does not point us to any material in the Petition that
`demonstrated, or even alleged, that the specific steps required by claim 21
`represent routine, conventional, general-purpose computer activity.
`Petitioner also indicates that the Petition mentioned claims 21 through
`23 by number, in the section submitted to show that the invention fails the
`§ 101 machine-or-transformation test. Id. Petitioner does not point,
`however, to any discussion in the Petition with respect to the machine-or-
`transformation test, as it might apply to the particular requirements of claim
`21, or of dependent claims 22 and 23.
`We have not considered Petitioner’s new assertions against the
`patentability of claims 21 through 23. The Board could not have
`misapprehended or overlooked arguments that were not presented in the
`Petition. In any event, the new arguments are based on a claim
`interpretation that is incorrect based on the present record. That is, the
`arguments are premised on the view that only the “initiating” step in base
`claim 21 is performed by a machine. See Paper 10 at 7-8.
`
`
`4
`
`
`
`CBM2013-00017
`Patent 6,834,282 B1
`
`
`CONCLUSION
`In view of the foregoing, Petitioner has not carried its burden of
`demonstrating that the Board’s Decision misapprehended or overlooked any
`matters. 37 C.F.R. § 42.71(d).
`
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s request for rehearing is denied.
`
`5
`
`
`
`6
`
`CBM2013-00017
`Patent 6,834,282 B1
`
`For Petitioner:
`
`Keith Broyles
`keith.broyles@alston.com
`
`Jason Cooper
`jason.cooper@alston.com
`
`David Frist
`david.frist@alston.com
`
`For Patent Owner:
`
`Kent Chambers
`kchambers@tcchlaw.com
`
`Alisa Lipski
`alipski@azalaw.com
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