UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`V.
`
`VERSATA DEVELOPMENT GROUP, INC.
`
`Patent Owner
`
`Case CBM20l6—0OlO0
`
`Patent No. 8,805,825
`
`VERSATA’S SUR-REPLY TO FORD’S PRELIMINARY REPLY
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`V.
`
`VERSATA DEVELOPMENT GROUP, INC.
`
`Patent Owner
`
`Case CBM20l6—0OlO0
`
`Patent No. 8,805,825
`
`VERSATA’S SUR-REPLY TO FORD’S PRELIMINARY REPLY
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`CBM20l 6—0O100
`
`Patent No. 8,805,825
`
`Despite originally only arguing that the ’825 patent claims are “incidental or
`
`complementary” to a financial product or service, Ford provides additional briefing
`
`in an attempt to recast the claimed use of “attributes” as finance-related activity.
`
`But Ford’s arguments still fail, by placing undue significance on an example
`
`embodiment of the claimed “attributes,” and seeking broad applicability of CBM
`
`review based only on cases that existed prior to Unwired Planet while ignoring
`
`post— Unwired Planet decisions.
`
`Ford argues that the recitation of an “attribute” and “prioritizing the valid
`
`configuration answers by one or more of the plurality of attributes” in independent
`
`claims 1, 6, and 11 involves pricing/cost data in View of the specification (see Ford
`
`Prelim. Reply, p. 1) and in View of disclaimed dependent claims 5, 10, and 15 (see
`
`id., pp. 2-3). Ford argues that because the claims referred to pricing/cost data, the
`
`claims are directed to finance—related activities.
`
`But Ford’s premise is unsupported by the metes and bounds of the claims
`
`themselves, or by any testimonial evidence. As noted in the POPR, the claimed
`
`“attributes” can be of % types; price and cost are only examples (along with
`
`“weight,” “towing capacity,” etc.). (POPR, pp. 10-11.) As said in Unwired Planet,
`
`“it cannot be the case that a patent covering a method and corresponding
`
`apparatuses becomes a CBM patent because its practice could involve a potential
`
`sale ofa good or service.” Unwired Planet, No. 2015-1812, slip op. at 12.
`
`-1-
`
`
`
`CBMZOI6-00100
`
`Patent No. 8,805,825
`
`Here, as in Unwirea’ Planet, the claims are industry—agnostic at heart, and
`
`this weak connection to finance—related activities is insufficient post— Unwired
`
`Planet. The weakness of F ord’s argument is evident in Ford’s failure to address the
`
`standard in View of _eg decisions applying Unwirecl Planet, including the facts of
`
`Unwirea’ Planet itself. These decisions are, so far, unequivocally unfavorable to
`
`Ford and fatal to its position. The remaining claims of the ’825 patent, even
`
`arguably considering their scope in View of the disclaimed claimsl, at best could
`
`involve price or cost data -— in specific embodiments of the claimed inventions. But
`
`this unduly myopic restriction is neither a requirement of the claims nor in any way
`
`central to the functioning of the claims.
`
`Further, Ford’s comparison of the Volusion and ’825 patent specifications,
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`rather than their claims, must be of no moment here. The Volusion claims bear no
`
`resemblance to the ’825 patent claims. And,
`
`the Board is not bound by pre-
`
`Unwirea’ Planet, non-precedential panel decisions. In any event, the claims there
`
`would arguably have been found not CBM—eligible had the reasoning of Unwired
`
`Planet been applied. Ford’s citation in this regard to such a non—authoritative case
`
`1 Like in Great West, even if the disclaimed claims are considered as relevant to
`
`the independent claims’ scope, the Board should similarly deny institution here.
`
`See Great West Cas. Co. v. Intellectual Ventures [1, CBM20l5—O0l7l, Paper 10.
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`And Great West questioned but did not address the propriety of such consideration.
`
`-2-
`
`
`
`CBM2016—0O100
`
`Patent No. 8,805,825
`
`is purely conclusory. Of far more import
`
`is the Board’s treatment of CBM
`
`eligibility since the November 21, 2016 decision in Unwired Planetz, denying
`
`institution in T-Mobile v. Intellectual Ventures [1, CBM20l6-00083; Kayak v. IBM,
`
`CBM2016-00077 and —OOO78; and Facebook v. Skky, CBM2016—00091.3
`
`In particular,
`
`in Kayak the petitioner argued that claims directed to “[a]
`
`method for presenting interactive applications” and “generating at
`
`least a first
`
`partition for presenting applications” are “limited to financial contexts because the
`
`recited ‘applications’ can be financial in nature.” Kayak —00077, Paper 15 at p. 12.
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`But in denying institution, the Board found that the record supported several non-
`
`financial applications. la’. The parallel to the ’825 patent “attributes” is direct.
`
`Ford’s analysis therefore fails to show how the industry-agnostic, claimed
`
`“attributes” are f1nance—related, and therefore institution must be denied.
`
`Date: January 25, 2017
`
`By:
`
`Robert Greene Sterne (Reg. No. 28,912)
`Lead Counsel for Patent Owner
`
`2 Ford’s analysis of Volusion in View of the Unwired Planet decision opens the
`
`door to further consideration of the full state of the case law.
`
`3 CBM review was instituted in three post— Unwirea’ Planet cases. These are the two
`
`Plaid Techs. v. Yodlee decisions at CBM2016—00O88 and —00089 (explicit claim to
`
`“financial
`
`transaction”
`
`/ “amount of the transaction”) and Emerson v. Sipco,
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`CBM2016-00095 (explicit claim to “ATM” / “Vending machine”).
`
`-3-
`
`
`
`CBM20l6-00100
`
`Patent No. 8,805,825
`
`CERTIFICATE OF SERVICE 137 C.F.R. § 42.6§en
`
`The undersigned hereby certifies that a true and correct copy of the enclosed
`
`VERSATA’S SUR-REPLY TO FORD’S PRELIMINARY REPLY was served
`
`electronically Via e—mail on January 25, 2017 in its entirety on the following
`
`counsel of record for Petitioner:
`
`Christopher C. Smith (Lead Counsel)
`Thomas A. Lewry (Back—up Counsel)
`John S. LeRoy (Back—up Counsel)
`Frank A. Angileri (Back—up Counsel)
`John P. Rondini (Back—up Counsel)
`Jonathan D. Nikkila (Back—up Counsel)
`BROOKS KUSHMAN P.C.
`
`1000 Town Center, Twenty—Second Floor
`Southfield, Michigan 48075
`FPGPO l 30CB MR1 @brooksl<ushman.com
`
`Respectfully submitted,
`
`Date: January 25, 2017
`
`By:
`
`Robert Greene Sterne, Registration No. 28,912
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1 100 NEW YORK AVENUE, NW
`
`WASHINGTON, D.C. 20005
`
`(202)371-2600
`
`Lead Counselfor Patent Owner
`Versata Development Group, Inc.
`
`
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