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.: 2016-00100
`
`______________
`
`
`
`PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND
`§ 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`(CLAIMS 1-20 OF U.S. PATENT NO. 8,805,825)
`
`
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`

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`Case No.: 2016-00100
`Patent No.: 8,805,825
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`Atty. Dkt. No.: FPGP0130CBMR1
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`Table of Contents
`
`
`
`
`
`Table of Contents ....................................................................................................... i
`
`List of Exhibits ......................................................................................................... iii
`
`Mandatory Notices Under 37 C.F.R. § 42.8 ............................................................ iv
`
`Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1) ............................................ iv
`
`Related Matters – 37 C.F.R. § 42.8(b)(2) ...................................................... iv
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ........................... iv
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ......................................... v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Overview Of The ‘825 Patent .......................................................................... 1
`
`III.
`
`Standing Requirements Under 37 C.F.R. § 42.304 ......................................... 6
`
`A. Grounds for Standing – 37 C.F.R. § 42.304(a) ..................................... 6
`
`B.
`
`Claims 1-20 of the ‘825 Patent are Directed to a Covered
`Business Method ................................................................................... 6
`
`1.
`
`2.
`
`The ‘825 Patent is directed to a “financial product or
`service” ........................................................................................ 7
`
`Claims 1-20 of the ‘825 Patent are not directed to a
`“technological invention” .........................................................12
`
`Petitioner has Been Sued for Infringement of the ’825 Patent
`and is not Estopped..............................................................................17
`
`Challenged Claims – 37 C.F.R. § 42.304(b)(1) ..................................18
`
`Grounds of Challenge – 37 C.F.R. § 42.304(b)(2) .............................18
`
`C.
`
`D.
`
`E.
`
`IV. Person Having Ordinary Skill in the Art .......................................................18
`
`V.
`
`Claim Construction – 37 C.F.R. § 42.304(b)(3) ............................................18
`
`VI. The ‘825 Patent Claims are Unpatentable Under the Statutory
`Grounds Identified Above – 37 C.F.R. § 42.304(b)(4) .................................19
`
`A. Ground 1 – Claims 1-20 of the ’825 Patent are Unpatentable
`Under 35 U.S.C. § 101 ........................................................................19
`
`i
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`1.
`
`The ‘825 Patent claims focus on one primary abstract
`idea: sorting configuration data, which can be done by a
`human with pen and paper ........................................................21
`
`a.
`
`b.
`
`c.
`
`The independent claims ..................................................21
`
`The dependent claims .....................................................35
`
`The ‘825 Patent claims do not recite improvements
`to a computer ..................................................................38
`
`2.
`
`The ’825 Patent does not include an “inventive concept”
`that transforms the ‘825 Patent claims into patent-eligible
`subject matter ............................................................................41
`
`B.
`
`Ground 2 – Claims 16 and 20 of the ‘825 Patent are Indefinite
`Under 35 U.S.C. § 112, ¶ 2 .................................................................42
`
`1.
`
`Claims 16 and 20 of the ‘825 Patent are indefinite
`because their structure is directed to a special purpose
`computer programmed to implement an algorithm not
`disclosed in the ‘825 Patent ......................................................43
`
`VII. Conclusion .....................................................................................................61
`
`VIII. Fee Statement .................................................................................................61
`
`
`
`
`
`ii
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`Atty. Dkt. No.: FPGP0130CBMR1
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`List of Exhibits
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`Case No.: 2016-00100
`Patent No.: 8,805,825
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`
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`
`
`Exhibit
`No.
`1001 U.S. Patent No. 8,805,825
`1002 Declaration of Deborah McGuinness
`
`Description
`
`
`Identifier
`‘825 Patent
`McGuinness Dec.
`Federal Register
`– August
`14,
`2002 (Part IV)
`
`AIA Legislative
`History Guide
`
`Federal Register
`– August
`14,
`2002 (Part V)
`‘825 Patent File
`History
`
`
`
`
`Stefik
`
`McDermott
`
`
`
`
`
`
`
`
`Federal Register – August 14, 2012 (Part IV)
`
`A Guide to the Legislative History of the America
`Invents Act; Part II of II, 21 Fed. Cir. Bar J. No. 4
`(2002), pp. 539-653
`
`Federal Register – August 14, 2012 (Part V)
`
`1003
`
`1004
`
`1005
`
`‘825 Patent File History
`
`1006
`2002 Lincoln Continental Order Guide
`1007
`2002 Lincoln Continental Price List
`1008
`1009 Versata Claim Construction Disclosure Document
`1010 McGuinness Curriculum Vitae
`1011
`Stefik, Introduction to Knowledge Systems (1995)
`McDermott, R1: an Expert in the Computer Systems
`Domain, Proceedings AAAI-80 (1980)
`McGuinness
`et
`al., An
`Industrial-Strength
`Description Logic-Based Configurator Platform,
`IEEE Intelligent Systems (1998)
`McGuinness et al., Description Logic in Practice: A
`CLASSIC: Application, Proceedings of the 14th
`International
`Joint Conference on Artificial
`Intelligence, Montreal, Canada, (August 1995)
`1015 Versata Complaint in the Versata lawsuit
`1016 Versata Counterclaim in the Ford lawsuit
`
`
`1012
`
`1013
`
`1014
`
`
`
`iii
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`Mandatory Notices Under 37 C.F.R. § 42.8
`
`Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford Motor Company (“Ford”) is the real party-in-
`
`interest.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related judicial matter: Ford Motor Co. v.
`
`Versata Software, Inc., Case No. 2:15-cv-10628-MFL-EAS (“the Ford lawsuit”).
`
`U.S. Patent No. 8,805,825 (“the ‘825 Patent”) is being asserted by Versata in this
`
`proceeding, along with seven additional patents. In connection with the litigation,
`
`Versata Software, Inc. has stated that it “holds all right, title, and interest in and to
`
`the ‘825 Patent.”1 (Ex. 1016 at 35-36.)
`
`The ‘825 Patent was also asserted in Versata Dev. Grp., Inc. v. Ford Motor
`
`Co., Case No. 4:15-cv-00316-RC-CMC (“the Versata lawsuit”). (Ex. 1015.) That
`
`case was dismissed without prejudice on December 3, 2015.
`
`Petitioner has not filed any concurrent petitions concerning the ‘825 Patent.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints Christopher C. Smith (Reg. No. 59,669) of Brooks
`
`
`1 The most recent assignment recorded with the U.S. Patent and Trademark Office
`
`states that the assignee of the ’825 Patent is Versata Development Group, Inc.
`
`iv
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`Kushman P.C. as lead counsel, and appoints Thomas A. Lewry (Reg. No. 30,770),
`
`John S. LeRoy (Reg. No. 48,158), Frank A. Angileri (Reg. No. 36,733), John P.
`
`Rondini (Reg. No. 64,949), and Jonathan D. Nikkila (Reg. No. 74,694) of Brooks
`
`Kushman P.C. as back-up counsel. An appropriate Power of Attorney is filed
`
`concurrently herewith.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
`
`Southfield, Michigan 48075.
`
` Petitioner consents to service by email at
`
`FPGP0130CBMR1@brookskushman.com.
`
`
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`v
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`Introduction
`
`
`
`I.
`
`The Petitioner, Ford Motor Company (“Ford”), asks the Board to decide that
`
`claims 1-20 of the ‘825 Patent are unpatentable under 35 U.S.C. §§ 101 and that
`
`claims 16 and 20 are indefinite under 35 U.S.C. § 112, ¶2. For the reasons set
`
`forth below, it is “more likely than not that at least one of the claims of the ‘825
`
`patent is unpatentable.” AIA § 18(a)(1) and 35 U.S.C. 324(a).
`
`II. Overview Of The ‘825 Patent
`
`The ’825 Patent is titled “Attribute Prioritized Configuration Using a
`
`Combined Configuration-Attribute Data Model.” (Ex. 1001 [‘825 Patent] at 1.)
`
`The patent was filed on January 12, 2005, which is the earliest priority date for the
`
`‘825 Patent. The ‘825 Patent issued on August 12, 2014.
`
`The ‘825 Patent describes and claims a configuration system that uses a
`
`“combined configuration rules-attributes model” to determine valid configuration
`
`answers and then prioritizes those answers based on one or more attributes in the
`
`combined configuration model. (Id. at Abstract, Fig. 6, 5:13-19, 7:4-67, 10:31-11:2
`
`and claim 1.) The ‘825 Patent lists several exemplary attributes for vehicles, which
`
`could be used as the basis for prioritizing configurations, such as “standard,”
`
`“optional,” “price,” “weight,” “towing capacity,” “description,” “ warranty,” and
`
`“fuel efficiency.” (Id. at 6:12-29.)
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`1
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`The ‘825 Patent discloses a prior art attribute-based prioritization
`
`configuration system. As shown in Figures 3 and 4 below, prior art systems: (1)
`
`presented a configuration query to the configuration model to find valid
`
`configurations (shown in blue); then (2) filtered the valid configurations using
`
`attribute information (such as reviewing information about price in the model) to
`
`the valid answers to associate a weight to each answer (shown in yellow –
`
`particularly 406); and finally (3) used a preference algorithm to select the preferred
`
`answer based on the weighting, i.e., prioritized the valid answers based on the
`
`selected attribute (shown in red). (Ex. 1002 [McGuinness Dec.] at ¶30.)
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`2
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`(Ex. 1001 [‘825 Patent] at Figs. 3 and 4 (annotated).)
`
`
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`3
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`Similarly, the purported invention of the ‘825 Patent performs the same
`
`processing as the prior art system but does so using a combined “configuration
`
`rules-attribute model” (506 in Fig. 5), which is used to determine the prioritized
`
`valid answers in one step. Figures 5 and 6 of the ‘825 Patent below describe the
`
`process of the purported invention of the ‘825 Patent. In those figures, the
`
`configuration rules (306 in Fig. 3) and attribute information (308 in Fig. 3) are
`
`combined together to form a combined rules attribute model (506 in Fig. 5 below).
`
`Process step 606 in Figure 6 below (green) depicts this methodology. (Ex. 1002
`
`[McGuinness Dec.] at ¶31; Ex. 1001 [‘825 Patent] at Abstract.)
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`(Ex. 1001 [‘825 Patent] at Figs. 5 and 6 (annotated).)
`
`Besides altering the order in which the rules and attribute information are
`
`processed (by combining rules and attribute information into a single model), both
`
`the prior art system and the configuration system claimed in the ‘825 Patent
`
`perform the same functions of determining valid configuration answers and
`
`prioritizing those answers based on one or more attributes.
`
` (Ex. 1002
`
`[McGuinness Dec.] at ¶32.)
`
`
`
`Finally, the method/system described and claimed in the ‘825 Patent is
`
`described as having applicability to a wide range of industries/products/services
`
`5
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`such as: “computer hardware and software manufacturing and sales, professional
`
`services,
`
`financial
`
`services,
`
`automotive
`
`sales
`
`and manufacturing,
`
`telecommunications sales and manufacturing, medical and pharmaceutical sales
`
`and manufacturing, and construction industries.” (Ex. 1001 [‘825 Patent] at 10:20-
`
`24.)
`
`III. Standing Requirements Under 37 C.F.R. § 42.304
`
`A. Grounds for Standing – 37 C.F.R. § 42.304(a)
`
`As further detailed below, claims 1-20 of the ‘825 Patent are unpatentable
`
`under one or more of 35 U.S.C. §§101 and 112. Thus, for the reasons set forth
`
`below, it is “more likely than not that at least one of the claims of the ‘825 patent is
`
`unpatentable.” 35 U.S.C. §324(a).
`
`B. Claims 1-20 of the ‘825 Patent are Directed to a Covered
`Business Method
`
`The AIA defines a covered business method (“CBM”) patent as “a patent
`
`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, except that the term does not include patents for
`
`technological inventions.” AIA § 18(d)(1)2; see also 37 C.F.R. § 42.301.
`
`According to the USPTO, “patents subject to covered business method patent
`
`
`2 All emphasis added unless otherwise noted.
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`review are anticipated to be typically classifiable in Class 705.” (Ex. 1003 [Federal
`
`Register – August 14, 2012 (Part IV)] at 48739.) Class 705 is one of the
`
`classifications that were applied to the ‘825 Patent. (Ex. 1001 [‘825 Patent] at 1.)
`
`1.
`
`The ‘825 Patent is directed to a “financial product or
`service”
`
`The USPTO noted that the AIA’s legislative history demonstrates that
`
`“financial product or service” should be “interpreted broadly,” encompassing
`
`patents “claiming activities that are financial in nature, incidental to a financial
`
`activity or complementary to a financial activity.” (Ex. 1003 [Federal Register –
`
`August 14, 2012 (Part IV)] at 48735.) Moreover, the language “practice,
`
`administration, or management” is “intended to cover any ancillary activities
`
`related to a financial product or service, including . . . marketing, customer
`
`interfaces [and] management of data . . . .” (Ex. 1004 [AIA Legislative History
`
`Guide] at 635-36.) “The phrase ‘method or corresponding apparatus’ is intended to
`
`encompass, but not be limited to, any type of claim contained in a patent,
`
`including, method claims, system claims, apparatus claims . . . and set of
`
`instructions on storage media claims.” (Id. at 638.)
`
`The ‘825 Patent is a covered business method because the claims cover
`
`sorting (i.e., prioritizing) configurations based on financial attributes such as price
`
`and cost. The ‘825 Patent specification discloses price/cost as an exemplary
`
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`attribute that can be used in attribute-based prioritization like the process claimed
`
`in the ‘825 Patent.
`
`• “An example of an attribute-prioritized query is the following: ‘Given a
`
`set of configured parts, return the part with the lowest cost that is
`
`compatible with the given parts, according to the rules in a given
`
`configuration model.’ An example of an attribute query is the following:
`
`‘Given a configuration model and a fully specified configuration,
`
`determine the sum of the price attributes for all of the parts in that
`
`configuration.” (Ex. 1001 [‘825 Patent] at 3:1-8.)
`
`• “However, attribute values can be used to identify preferred valid
`
`answers such as the least expensive vehicle, the most expensive vehicle,
`
`the heaviest vehicle, etc.” (Id. at 3:18-21.)
`
`• “Table 2 sets forth example attribute types. An attribute can also be an
`
`aggregate of other attributes. For example, a part group price may be an
`
`aggregate of prices for other parts and/or part groups.”
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`(Id. at 6:12-29 (annotated).)
`
`
`
`• “The valid answers can be prioritized in accordance with one or more
`
`attribute values. For example, valid answers can be ordered based on
`
`lowest to highest price.” (Id. at 7:46-48.)
`
`The PTAB has held that “[p]roviding pricing data is financial in nature, incidental
`
`to a financial activity or complementary to a financial activity.” WTS Paradigm,
`
`LLC v. EdgeAQ, LLC, Case CBM2015-00054, slip op. at 8 (2015) (Paper 7), citing
`
`SAP AM. Inc. v. Versata Dev. Grp., Inc., Case CBM2012-00001, slip op. at *23
`
`(PTAB Jan. 9, 2013) (Paper 36). Accordingly, the use of pricing as a prioritization
`
`attribute in the ‘825 Patent supports a finding that the ‘825 Patent claims cover a
`
`“financial service or product” suitable for CBMR relief.
`
`
`
`Additionally, the ‘825 Patent states:
`
`Many embodiments of the present invention have application to a
`
`wide range of industries and products including the following:
`
`computer hardware and
`
`software manufacturing and
`
`sales,
`
`professional services, financial services, automotive sales and
`
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`manufacturing, telecommunications sales and manufacturing, medical
`
`and pharmaceutical sales and manufacturing, and construction
`
`industries.
`
`(Ex. 1001 [‘825 Patent] at 10:18-24.) In other words, the claimed inventions of the
`
`‘825 Patent are applicable to sales of products and “financial services” as well as
`
`other financial applications such as sales.
`
`Furthermore, the ‘825 Patent claims expressly cover “financial products.”
`
`(Id. at Claims 1, 5, 6, 10, 11, and 15.) For example, claim 1 of the ‘825 Patent
`
`includes the term “attribute” in its limitations, which as discussed above includes
`
`“price”: “[a] method for using computing assisted configuration technology to
`
`generate one or more attribute [e.g., price] prioritized configuration answers to one
`
`or more attribute-based [e.g., price-based] configuration queries.” (Id. at claim 1.)
`
`And claim 5, which depends from claim 1, claims “the one or more attribute-based
`
`[e.g., price-based] configuration queries comprise attribute-based [e.g., price-
`
`based] configuration queries to configure at least one of the products from the
`
`group comprising: vehicles, computers, and financial products.” (Id. at claim 5.)
`
`The same subject matter is likewise claimed in claims 6/10 and 11/15 of the ‘825
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`Patent.3 Thus, several claims of the ‘825 Patent expressly cover the data processing
`
`(i.e., “processing the one or more attribute-based configuration queries” of claims
`
`1, 6 and 11 of the ‘825 Patent) of financial products (i.e., “financial product” of
`
`claims 5, 10 and 15 of the ‘825 Patent).
`
`Finally, as discussed above, several claims in the ‘825 Patent expressly
`
`relate to the configuration of saleable products such as “vehicles, computers and
`
`financial products.” (Ex. 1001 [‘825 Patent] at Claims 5, 10 and 15.) The PTAB
`
`has held that other patents for configuring saleable products relate to “a financial
`
`product or service.” See, e.g., WTS Paradigm, LLC v. EdgeAQ, LLC, CBM2015-
`
`00054, Paper 7 (2015) (claims for “[a] configuration system” and method); GSI
`
`Commerce Solutions, Inc. v. Clear with Computers, LLC, CBM2013-00055, Paper
`
`16 (2014) (claims covering “a configuration engine”); Volusion, Inc. v. Versata
`
`Software, Inc., CBM2013-00018, Paper 8 (2013) (patent claiming “a computer
`
`system and a database that stores product configurations and product configuration
`
`information”).
`
`The configuration systems and methods claimed in the ‘825 Patent are at
`
`
`3 Where a single claim meets the requirements to qualify for CBM review, review
`
`of all claims in that patent is proper. See SAP Am., Inc. v. Versata Development
`
`Gp., Inc., Case CBM2012-00001, slip op. at *27 (PTAB Jan. 9, 2013) (Paper 36).
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`least “incidental to” or “complementary to” a financial activity, such as the
`
`purchase of an automobile. Therefore, the ‘825 Patent “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).
`
`2.
`
`Claims 1-20 of the ‘825 Patent are not directed to a
`“technological invention”
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent is for a
`
`technological invention, “the following will be considered on a case-by-case basis:
`
`whether the claimed subject matter as a whole recites a technological feature that is
`
`novel and unobvious over the prior art; and solves a technical problem using a
`
`technical solution.” 37 C.F.R. § 42.301. When this definition was first proposed
`
`by the USPTO, commentators asked the USPTO to revise the definition to clarify
`
`that a technological invention could meet one of these tests or the other, or to
`
`provide a wholly different test. (Ex. 1003 [Federal Register – Aug. 14, 2012 (Part
`
`IV)] at 48,736-37.) The USPTO declined to change the definition citing the
`
`legislative history, which explained that the “‘patents for technological inventions’
`
`exception only excludes patents whose novelty turns on a technological innovation
`
`over the prior art and are concerned with a technical problem which is solved by a
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`technical solution.” (Id. at 48,735.) The PTO left the “and” and explained that its
`
`definition is consistent with the AIA’s legislative history and represents “the best
`
`policy choice.” Id. at 48,735-36.
`
`The Office Patent Trial Practice Guide explains that the following drafting
`
`techniques typically do not render a patent a “technological invention”:
`
`
`
`(a) Mere recitation of known technologies, such as computer
`
`hardware, communication or computer networks, software, memory,
`
`computer-readable storage medium, scanners, display devices or
`
`databases, or specialized machines, such as an ATM or point of sale
`
`device.
`
`
`
`(b) Reciting the use of known prior art technology to
`
`accomplish a process or method, even if that process or method is
`
`novel and non-obvious.
`
`
`
`(c) Combining prior art structures to achieve the normal,
`
`expected, or predictable result of that combination.
`
`(Ex. 1005 [Federal Register – Aug. 14, 2012 (Part V)] at 48,764.)
`
`The ’825 patent is not directed to a technological invention. Instead, it is
`
`directed to the use of well-known, generic software and computer hardware, which
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`can execute a series of steps. For example, claim 1 is directed to a method for
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`sorting potential product configurations based on specific part attributes (e.g.,
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`price). Indeed, claim 1 is as simple as taking different products and organizing
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`them from the least expensive to the most expensive. Claim 1 covers: (1) receiving
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`attribute-based queries; (2) processing those queries; (3) determining and storing
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`values of combinations of attributes; (4) retrieving the stored values; (5) receiving
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`a selection of an attribute; (6) prioritizing valid configuration answers based on one
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`or more of a plurality of attributes; and (7) providing at least a subset of
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`configuration answers that are prioritized by one or more of the attributes. (Ex.
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`1001 [‘825 Patent] at Claim 1.) Claim 1’s reference to a “computer system
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`programmed with code stored in memory and executable by a processor of the
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`computer system,” recites no new hardware, machine or technology to perform the
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`claimed method. (Ex. 1002 [McGuinness Dec.] at ¶28.) These references are
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`nothing more than recitation of known technologies. (Id.)
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`Indeed, the ‘825 Patent teaches that the embodiments described in the
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`specification can be implemented on a “general-purpose computer,” such as the
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`one shown in Figure 9 of the ‘825 Patent (shown below). (Ex. 1001 [‘825 Patent]
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`at 9:10-14 and Fig. 9.)
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`(Id. at Fig. 9.)
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`
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`The claims mention “a computer system,” “a processor,” “a memory,” and a
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`“storage medium,” but none of these items is novel in attribute-based configuration
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`systems. As discussed above, the invention is not limited to any particular
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`hardware or software implementation: “[t]he combined configuration rules-
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`attribute configuration system 500 and combined configuration rules-attribute
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`configuration process 600 may be implemented in any type of computer system or
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`programming or processing environment.” (Id. at 9:67-10:4.)
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`The ‘825 Patent claims a system and method for generating attribute
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`prioritized configuration answers to attribute-based configuration queries. (Ex.
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`1001 [‘825 Patent] at claims 1-20.) But the ‘825 Patent admits that attribute-based
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`configuration systems were old. (See, e.g., id. at “prior art” Figures 3-4 and
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`accompanying text.) The ‘825 Patent teaches that in the prior art (i.e.,
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`“conventional”) attribute-based configuration systems, the configuration model is
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`“separated from attribute information” so that the “configuration model . . . is not
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`used to process attribute related data.” (Id. at 3:32-38.)
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`Combining the configuration model with the attribute information model
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`appears to be the only difference between the system described in the ‘825 Patent
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`and the prior art. In the “Field of the Invention,” the ‘825 Patent describes the
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`“present invention” as a “system and method for prioritizing configuration[s] using
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`a combined configuration rules-attributes model.” (Ex. 1001 [‘825 Patent] at 1:9-
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`12.) And in the “Reasons for Allowance” for the ‘825 Patent, the examiner
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`concluded that “no single prior art reference teaching [sic] of processing an
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`attribute-based configuration query in accordance with a rule-attribute model to
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`determine valid configuration answers, and prioritizing the answers by attributes,
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`as recited in independent claims 1, 7, 13 and 19.” (Ex. 1006 [‘825 Patent File
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`History - ‘825 Patent Notice of Allowability] at 467.) This point of novelty was
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`also emphasized by the applicants of the ‘825 Patent to overcome the prior art:
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`Although Neal discusses attributes and configurable attributes in the
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`foregoing section, Neal does not explicitly teach or suggest a
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`"combined configuration rules-attributes model" as required by
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`claims 1, 7, 13, and 19. However, the specification of Neal is
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`illuminating. Referring to Figure 1 of Neal, a Catalog 14 (also referred
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`to in Neal as a "database 14") and Rules 26 (also referred to in Neal as
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`"rules store 26" are clearly separately indicated and not indicated as
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`a "combined configuration rules-attributes model" as required by
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`claims 1, 7, 13, and 19.
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`(Ex. 1006 [‘825 Patent File History - 2010-10-01 OA Response] at 245-246.)
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`In other words, the only purported advancement described in the ‘825 Patent
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`is taking a known configuration model and a known attribute information model
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`and combining them. But “a patent is not a technological invention because it
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`combines known technology in a new way to perform data processing operations.”
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`(Ex. 1004 [Legislative History of the American Invents Act] at 635.) For this
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`reason, and the reasons discussed above, the ’825 patent is not directed to a
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`technological invention.
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`C.
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`Petitioner has Been Sued for Infringement of the ’825
`Patent and is not Estopped
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`Petitioner has been sued for infringement of claims 1-20 of the ‘825 patent
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`in the Ford Lawsuit. Petitioner is not estopped from challenging the claims on the
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`grounds identified in the petition. 37 C.F.R. § 42.302(b). Petitioner has not been
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`party to any other post-grant review of the challenged claims.
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`D. Challenged Claims – 37 C.F.R. § 42.304(b)(1)
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`
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`Petitioner requests review under 35 U.S.C. § 321 and AIA § 18 of claims 1-
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`20 of the ‘825 Patent and asks the Patent Trial and Appeal Board (“PTAB”) to
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`cancel those claims as unpatentable.
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`E. Grounds of Challenge – 37 C.F.R. § 42.304(b)(2)
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`Ford challenges all claims as unpatentable under 35 U.S.C. § 101. Ford
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`challenges claims 16 and 20 as indefinite under 35 U.S.C. § 112, ¶ 2.
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`The unpatentability grounds set forth in this Petition are confirmed and
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`supported by the declaration of Dr. Deborah McGuinness. (“McGuiness Dec.”
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`attached as Ex. 1002.)
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`IV. Person Having Ordinary Skill in the Art
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`A person having ordinary skill in the art (“PHOSITA”) would have either:
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`(1) a bachelor’s degree in computer science, electrical engineering, computer
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`engineering, or similar technical field and some familiarity with configuration
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`systems, or (2) equivalent experience in the design and/or implementation of
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`configuration systems. (Ex. 1002 [McGuinness Dec.] at ¶22.)
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`V. Claim Construction – 37 C.F.R. § 42.304(b)(3)
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`“A claim in an unexpired patent . . . shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
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`C.F.R. § 42.100(b). For purposes of this petition, Petitioner does not believe any
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`terms in the challenged claims require construction beyond their plain and ordinary
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`meaning under the broadest reasonable interpretation standard for this proceeding.
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`VI. The ‘825 Patent Claims are Unpatentable Under the Statutory
`Grounds Identified Above – 37 C.F.R. § 42.304(b)(4)
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`A. Ground 1 – Claims 1-20 of the ’825 Patent are Unpatentable
`Under 35 U.S.C. § 101
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`“Whoever invents or discovers any new and useful process, machine,
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`manufacture, or composition of matter, or any new and useful improvement
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`thereof, may obtain a patent therefor, subject to the conditions and requirements of
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`this title.” 35 U.S.C. § 101. Supreme Court precedent provides three specific
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`exceptions to the broad categories of § 101: laws of nature, physical phenomena,
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`and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010). “The ‘abstract
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`ideas’ category embodies the longstanding rule that ‘[a]n idea of itself is not
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`patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014)
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`(citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
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`When a patent claims abstract ideas, like the rearrangement of data at the
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`heart of the ‘825 patent, it must add “significantly more” to be patent-eligible.
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`Parker v. Flook, 437 U.S. 584, 593-94 (1978). It is not sufficient to limit the claim
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`to “a particular technological environment” or to add “insignificant post solution
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`activity” or “well-understood, routine, conventional activity.” Bilski, 561 U.S. at
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`610-11; Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294
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`(2012). Instead, a claim involving an unpatentable concept must contain “other
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`elements or a combination of elements, sometimes referred to as the ‘inventive
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`concept,’” sufficient to prevent patenting the underlying concept itself. Mayo, 132
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`S.Ct. at 1294; see also Flook, 437 U.S. at 594. Another way a claim may recite
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`“significantly more” than an abstract idea is to be “tied to a particular machine or
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`apparatus” or “transform a particular article into a different state or thing.” Bilski,
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`561 U.S. at 602-604. Under any of these analyses, the ‘825 Patent claims fail to
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`satisfy 35 U.S.C. § 101.
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`In Alice, the Supreme Court referred to the framework set forth in Mayo “for
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`distinguishing patents that claim laws of nature, natural phenomena,