UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 8,805,825
`
`CBM Case No.: CBM2016-00100
`
`
`
`______________
`
`
`
`FORD MOTOR COMPANY’S PRELIMINARY REPLY IN SUPPORT OF
`ITS PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-
`SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 8,805,825
`
`CBM Case No.: CBM2016-00100
`
`
`
`______________
`
`
`
`FORD MOTOR COMPANY’S PRELIMINARY REPLY IN SUPPORT OF
`ITS PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-
`SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`Versata contends that the ‘825 Patent claims do not cover a financial product
`
`or service under AIA § 18(d), as discussed in Unwired Planet, LLC v. Google, Inc.,
`
`841 F.3d 1376, 1382 (Fed. Cir. 2016). In Unwired Planet, the Federal Circuit stated
`
`that “CBM patents are limited to those with claims that are directed to methods and
`
`apparatuses of particular types and with particular uses ‘in the practice,
`
`administration, or management of a financial product or service.’” Id. The Federal
`
`Circuit did not provide a test, or examples, of what constitutes a CBM-eligible
`
`patent, but instead vacated and remanded the issue to the Board.
`
`Independent claims 1, 6 and 11 of the ‘825 Patent include the limitations
`
`“attribute” and “prioritizing the valid configuration answers by one or more of the
`
`plurality of attributes.” (Ex. 1001). Read in view of the ‘825 specification, those
`
`terms involve pricing/cost data (e.g., Ex. 1001, at 3:1-8, 3:18-21, 6:12-29, 7:46-48),
`
`which are “finance-related activities” covered by the CBM statute. Versata Dev.
`
`Grp. v. SAP Am., Inc., 793 F. 3d 1306, 1325 (Fed. Cir. 2015) (“The plain text of the
`
`statutory definition contained in § 18(d)(1) . . . on its face covers a wide range of
`
`finance-related activities”). Further, the ‘825 Patent discloses that the claimed
`
`invention can be applied to “financial services.” (Ex. 1001, at 10:18-24); Volusion,
`
`Inc. v. Versata Software, Inc., CBM2013-00017, Paper 8, p. 5-6 (PTAB Oct. 24,
`
`2013) (finding that claims of a Versata patent were CBM-eligible in part because the
`
`specification disclosed “that ‘[m]any embodiments of the present invention have
`
`1
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`application to a wide range of industries’ including ‘financial services’”). Finally, as
`
`demonstrated by Ford’s expert, the ‘825 Patent claims cover a data processing
`
`method a salesperson could apply during a sales transaction. (Ex. 1002, at ¶¶37-42.)
`
`Versata contends that because price and cost are only examples of the claimed
`
`“attribute,” the ‘825 Patent is not CBM-eligible. However, Unwired Planet does not
`
`condition CBM eligibility on the claims being limited to only the practice,
`
`administration, or management of a financial product or service; Unwired Planet
`
`merely recites the language from AIA § 18(d). Versata’s interpretation – beyond
`
`what is stated in Unwired Planet – would preclude CBM review of patents claiming
`
`finance-related subject matter simply because their claims may also cover additional
`
`subject matter. No Federal Circuit case has so held and the CBM statute contains no
`
`such limitation. AIA § 18.
`
`Versata further argues that disclaimed dependent claims 5, 10 and 15 should
`
`be treated as if they never existed, and not considered when determining CBM
`
`eligibility, even though those dependent claims expressly cover applying the claimed
`
`invention to “financial products.” First, the fact that claims 5, 10 and 15 were
`
`disclaimed does not change the finance-related scope of the independent claims from
`
`which they depend. J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`
`CBM2014-00157, Paper 11, p. 3 (PTAB Feb. 18, 2015). Second, although the
`
`disclaimed claims cannot form the basis for CBM eligibility, they may still be
`
`2
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`considered to determine whether pending independent claims encompass finance-
`
`related subject matter. Great West Cas. Co. v. Intellectual Ventures II LLC,
`
`CBM2015-00171, Paper 10, p. 8 (PTAB Feb. 9, 2016) (acknowledging that some
`
`panels have considered a “otherwise statutorily disclaimed dependent claim . . . to
`
`the extent that the still pending independent claim from which it depends may
`
`include claim limitations that encompass the finance-related subject matter of that
`
`dependent claim”)1; Am. Express Co. v. Maxim Integrated Prods., Inc., CBM2015-
`
`00098, Paper 17, p. 8-9 (PTAB Sept. 22, 2015).
`
`Dependent claims 5, 10 and 15 make it clear that each independent claim of
`
`the ‘825 Patent includes attribute-based configuration queries used to configure and
`
`prioritize financial products. This configuration and prioritization of financial
`
`products satisfies the “administration” and/or “management” of financial products
`
`requirements for CBM coverage in AIA § 18(d).
`
`Dated: January 18, 2017
`
`
`
`
` /Christopher C. Smith/
`Christopher C. Smith (Reg. No. 59,669)
`
`Attorney for Petitioner
`
`
`
`
`1 The PTAB added “that it may even be reasonable to . . . impute any finance-related
`
`subject matter from a statutorily disclaimed dependent claim to any other still
`
`pending claim which recites limitations that clearly encompass the finance-related
`
`subject matter of the dependent claim.” Id.
`
`3
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that on January 18, 2017 a complete and
`entire copy of FORD MOTOR COMPANY’S PRELIMINARY REPLY IN
`SUPPORT OF ITS PETITION FOR POST-GRANT REVIEW (COVERED
`BUSINESS METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE
`LEAHY-SMITH AMERICA INVENTS ACT, was served via electronic mail to
`PTAB@skgf.com;
`rsterne-PTAB@skgf.com;
`sbezos-PTAB@skgf.com;
`holoubek@skgf.com;
`jmutsche-PTAB@skgf.com;
`jtuminar-PTAB@skgf.com;
`kchambers@tcchlaw.com; sharoon.saleem@jonesspross.com which will serve the
`following counsel of record:
`
`
`BACK-UP COUNSEL
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`Kent B. Chambers
`Terrile, Cannatti, Chambers & Holland, LLP
`11675 Jollyville Road, Suite 100
`Austin, TX 78759
`
`Sharoon Saleem
`Jones & Spross, PLLC
`1605 Lakecliff Hills Ln., Suite 100
`Austin, TX 78732-2437
`
`Respectfully submitted,
`
`
` /Christopher C. Smith/
`Christopher C. Smith (Reg. No. 59,669)
`John S. LeRoy (Reg. No. 48,158)
`Thomas A. Lewry (Reg. No. 30,770)
`Frank A. Angileri (Reg. No. 36,733)
`
`4
`
`LEAD COUNSEL
`Robert Greene Sterne
`Sterne, Kessler, Goldstein & Fox
`PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`John P. Rondini (Reg. No. 64,949)
`Jonathan D. Nikkila (Reg. No. 74,694)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Attorneys for Petitioner
`
`
`
`
`
`5
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