UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
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`Case CBM2016-00100
`Patent No. 8,805,825
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`VERSATA’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.207(a)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`CBM2016-00100
`Patent No. 8,805,825
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS ........................................................................................... i
`EXHIBIT LIST ......................................................................................................... ii
`I.
`INTRODUCTION ............................................................................................... 1
`II. THE ’825 PATENT TECHNOLOGY ................................................................ 2
`III. CLAIM CONSTRUCTION ............................................................................ 4
`A. “attribute”......................................................................................................... 5
`B. “attribute prioritized” ....................................................................................... 5
`IV. THE ’825 PATENT IS NOT ELIGIBLE FOR CBM REVIEW. ................... 5
`A. Ford relies on an incorrect standard for determining whether the claims are
`directed to a financial product or service. .............................................................. 6
`B. Ford fails to demonstrate—and cannot demonstrate—that the claims are
`directed to a financial product or service under application of the correct
`standard. .................................................................................................................. 9
`C. Ford’s reliance on “express” disclosures of financial products or services is
`based on disclaimed claims. .................................................................................13
`D. The claims of the ’825 patent recite a technological invention. ....................14
`V. FORD HAS NOT SHOWN THAT THE CLAIMS OF THE ’825 PATENT
`ARE MORE LIKELY THAN NOT UNPATENTABLE. ......................................21
`A. The claims of the ’825 patent are directed to statutory subject matter under
`35 U.S.C. § 101. ...................................................................................................21
`B. Claims 16 and 20 have been disclaimed, rendering Ford’s ground of
`invalidity for indefiniteness moot. ........................................................................35
`VI. CONCLUSION ..............................................................................................36
`CERTIFICATION OF WORD COUNT (37 C.F.R. § 42.24(b)(1)) ......................... 1
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)) ............................................... 2
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`CBM2016-00100
`Patent No. 8,805,825
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`EXHIBIT LIST
`
`Complaint, Versata Development Group, Inc. et al. v. Ford
`Motor Co., Civ. No. 4:15-cv-00316 (E.D. Tex.), D.I. 1
`Declaration of Dr. David W. Franke
`Curriculum Vitae of Dr. David W. Franke
`Versata: About Us, available at http://cpq.versata.com/about-us,
`2016.
`“Ford Starts Firm to Manage Its Web Sites,” ComputerWorld,
`February 28, 2000.
`McCartney, Laton, “Trilogy Making A Name For Itself,”
`ZDNet, July 28, 2000.
`Field, Tom, “Suit Yourself,” InsideCIO, Vol. 10, No. 13, April
`15, 1997.
`“Ford and Trilogy Launch Web Company,” InformationWeek,
`February 23, 2000.
`Statutory Disclaimer for U.S. Patent No. 8,805,825, October
`28, 2016.
`PTAB Board Email dated October 26, 2016
`“Report and Recommendation of the Special Master Regarding
`Claim Construction” Ford Motor Company v. Versata
`Software, Inc., 15-10628 (E.D. MI) (2016)
`
`2001
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`2002
`2003
`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
`2011
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`CBM2016-00100
`Patent No. 8,805,825
`
`I.
`
`INTRODUCTION
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`The Petition as filed on September 12, 2016 is woefully deficient, and
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`Petitioner Ford Motor Company failed to satisfy its burden of persuasion at every
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`turn. Regarding CBM eligibility, Ford’s characterization of the claims as
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`“financial” are a stretch at best, and are based solely on a “test” that the Federal
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`Circuit has described as insufficient and misaligned with the CBM eligibility
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`statute. Ford also completely failed to address an entire prong of the “technological
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`invention” test, providing no discussion of the claimed invention’s technical
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`problem or technical solution.
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`Regarding subject matter eligibility, in its “analysis” of an alleged abstract
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`idea, Ford created a strawman abstract idea that does not actually map to the
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`language of the claims. And Ford’s allegation that the claims recite routine and
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`conventional functionality is based solely on attorney argument that includes no
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`supporting evidence of what actually was routine and conventional. Any one of
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`these deficiencies presents sufficient reason to deny the Petition outright; the
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`combination of deficiencies renders the Petition fatally inadequate.
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`Further, Ford’s ground of unpatentability of claims 16 and 20 under 35
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`U.S.C. § 112, second paragraph, is mooted by statutory disclaimer.
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`CBM2016-00100
`Patent No. 8,805,825
`For the reasons summarized above and explained in more detail below, Ford
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`has failed to establish that U.S. Patent No. 8,805,8251 is eligible for CBM review
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`and has also failed to establish that it is more likely than not that at least one of the
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`claims of the ’825 patent is unpatentable. The Board should therefore deny
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`institution of this CBM review proceeding against any of the claims of the ’825
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`patent.
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`II. THE ’825 PATENT TECHNOLOGY
`The ’825 patent generally relates to computer assisted configuration
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`technology. (Ex. 2002, Franke Decl., para. 23; Ex. 1001, ’825 patent, 4:39-43.)
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`Computer assisted configuration technology relies on a set of configuration rules,
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`which can be queried using configuration questions to provide a set of valid
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`answers. (Franke Decl., para. 25; Ex. 1001, 1:61-2:30) For example, when building
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`a vehicle using a configuration model for that vehicle, it is possible to ask whether
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`the parts ‘red’ and ‘V6 engine’ are compatible with each other, and receive an
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`answer from the model. (Franke Decl., para. 26; Ex. 1001, 1:61-2:30.)
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`Configuration processing becomes particularly complex when configuration
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`queries can include attribute-based configuration processing. Versata developed
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`1 U.S. Patent No. 8,805,825 is marked as Ford’s exhibit 1001. Versata will
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`refer to this patent as “the ’825 patent.”
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`CBM2016-00100
`Patent No. 8,805,825
`the technology of the ’825 patent to address the computing demand challenges of
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`attribute-based configuration processing. (Franke Decl., para. 30; Ex. 1001, 3:8-
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`10.) An example of this query may be “[g]iven a set of configured parts, return the
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`part with the lowest cost that is compatible with the given parts, according to the
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`rules in a given configuration model.” (Franke Decl., para. 34; Ex. 1001, 3:1-4.)
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`Before the ’825 patent, attribute-based configuration processing required a
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`computationally-inefficient two-step process. (Franke Decl., paras. 34-36; Ex.
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`1001, 3:1-10.) In this conventional process, a configuration model is interrogated
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`as before in order to find a set of valid answers to a particular configuration query.
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`(Franke Decl., para. 33; Ex. 1001, 3:38-46 and FIG. 4, element 404.) Then,
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`attributes from an attribute information model are applied to the valid answers in
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`order to associate each valid answer with the attributes that apply to it. (Franke
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`Decl., para. 33; Ex. 1001, 3:46-53 and FIG. 4, element 406.) But while this
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`conventional approach will provide an attribute-based configuration that provides a
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`preferred answer, it requires performing expensive computations in interrogating
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`the configuration model in order to provide answers that will ultimately be
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`discarded, e.g. any valid configuration that involves anything other than the
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`lowest-cost valid part will have wasted processing in determining the validity of
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`the configuration.
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`CBM2016-00100
`Patent No. 8,805,825
`the challenge of computationally-inefficient attribute-based
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`To solve
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`configuration processing, the ’825 patent builds a configuration-attribute model
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`capable of answering configuration queries. (Franke Decl., para. 37; Ex. 1001,
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`Abstract, 5:50-65.) The novel approach minimizes
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`the number of valid
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`configuration answers to be considered for presentation based on the attribute
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`information. (Franke Decl., para. 38; Ex. 1001, Abstract, 5:50-65.) In contrast with
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`the conventional approach previously discussed, the ’825 patent is able to
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`interrogate the configuration-attribute model with a configuration query and a
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`preference algorithm in a single step, in order to determine an answer that is both
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`preferred and valid. (Franke Decl., para. 39; Ex. 1001, 7:16-21 and FIG. 6,
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`element 606.) The claimed ’825 patent approach therefore provides computational
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`efficiency over the conventional approach.
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`III. CLAIM CONSTRUCTION
`In its claim construction section, Ford notes that it “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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`(Petition, pp. 18-19.)
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`However, it should be noted for completeness of the record that a Report and
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`Recommendation of the Special Master Regarding Claim Construction in the
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`concurrent litigation issued on November 7, 2016, addressing several terms in the
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`CBM2016-00100
`Patent No. 8,805,825
`’825 patent. (Ex. 2011.) The Special Master’s conclusions are highlighted below.
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`However, the constructions from the concurrent litigation do not affect the analysis
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`herein, which is applicable to both these constructions and the plain and ordinary
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`meaning under the broadest reasonable interpretation of the claims.
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`“attribute”
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`A.
`Claims 1-20 recite the term “attribute.” In concurrent litigation, the parties
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`ultimately agreed that the term “attribute” means “a particular detail about a part or
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`part group, which is different from a rule, but which can be part of a rule,” and this
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`construction was adopted by the Special Master. (Ex. 2011, p. 54.)
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`“attribute prioritized”
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`B.
`Claims 1, 3, 4, 6, 8, 9, 11, 13, 14, and 16 recite the phrase “attribute
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`prioritized.” In concurrent litigation, the parties ultimately agreed that the term
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`“attribute prioritized” means “giving priority to valid configuration answers based
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`on selected attribute types and values,” and this construction was adopted by the
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`Special Master. (Id., p. 55.)
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`IV. THE ’825 PATENT IS NOT ELIGIBLE FOR CBM REVIEW.
`CBM review is available only for a “covered business method patent,”
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`which the America Invents Act defines as “a patent that claims a method or
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`corresponding apparatus for performing data processing or other operations used in
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`CBM2016-00100
`Patent No. 8,805,825
`the practice, administration, or management of a financial product or service,
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`except that the term does not include patents for technological inventions.” AIA §
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`18(d)(1).
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`Ford has failed to demonstrate that the ’825 patent is a CBM patent under
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`the provisions of AIA § 18(d)(1), and therefore lacks standing. Specifically, none
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`of the claims of the ’825 patent are directed to the “practice, administration or
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`management of a financial product or service.” AIA § 18(d)(1). Additionally, the
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`claims of the ’825 patent are directed to a “technological invention,” which
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`separately renders the claims ineligible for CBM review. AIA § 18(d)(1).
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`Ford relies on an incorrect standard for determining whether the
`A.
`claims are directed to a financial product or service.
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`Ford’s argument that the claims of the ’825 patent satisfy the “financial
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`product or service” test is based on an erroneous standard. Ford wholly relies on
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`the “incidental or complementary” standard—recently held by the Federal Circuit
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`to be a misleading test—rather than the standard explicitly defined by Section 18
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`of the AIA and the PTO’s own Rule. For example, Ford heavily relies upon
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`legislative history of the AIA:
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`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
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`CBM2016-00100
`Patent No. 8,805,825
`to a financial activity or complementary to a financial
`activity.” (Ex. 1003 [Federal Register – August 14, 2012
`(Part IV)] at 48735.)
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`Petition, p. 7.
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`Ford concludes its arguments by saying simply that “[t]he configuration
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`systems and methods claimed in the ’825 Patent are at least ‘incidental to’ or
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`‘complementary to’ a financial activity, such as the purchase of an automobile.”
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`(Petition, pp. 11-12.) And Ford relies on the WTS Paradigm decision for the
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`proposition that “[p]roviding pricing data is financial in nature, incidental to a
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`financial activity or complementary to a financial activity.” (Petition, p. 9.)
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`Ford’s arguments on this point are entitled to no weight, as they rely entirely
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`on the erroneous standard for CBM review eligibility that was the subject of the
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`recent Unwired Planet decision. In Unwired Planet, the Federal Circuit vacated
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`and remanded a final written decision issued by the Board because of an erroneous
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`finding of CBM review eligibility. Unwired Planet, LLC v. Google Inc., No. 2015-
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`1812 (Fed. Cir. Nov. 21, 2016).
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`Specifically, in determining compliance with the “financial product” test
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`articulated in the AIA, the Board in Unwired Planet stated that the proper inquiry
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`“is whether the patent claims activities that are financial in nature, incidental to a
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`financial activity, or complimentary to a financial activity.” Unwired Planet, No.
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`CBM2016-00100
`Patent No. 8,805,825
`2015-1812, slip op. at 8 (internal quotation marks omitted). But the Federal Circuit
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`disagreed, stating:
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`The Board’s application of the “incidental to” and
`“complementary to” language from the PTO policy
`statement instead of the statutory definition renders
`superfluous the limits Congress placed on the definition
`of a CBM patent. 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.” AIA § 18(d).
`Unwired Planet, No. 2015-1812, slip op. at 12.
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`This interpretation of a CBM patent is consistent with the USPTO’s own
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`definition, which adopts the statutory language from the AIA. 37 C.F.R. §
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`42.301(a).
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`Ford was aware of the proper standard—as laid out in both the statute and
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`the rule—and chose not to address that standard. Since the “incidental to” or
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`“complementary to” standard used by Ford to analyze the ’825 patent claims for
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`CBM review eligibility is improper with respect to either AIA § 18(d) or 37 C.F.R.
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`§ 42.301(a) based on the decision in Unwired Planet, Ford’s petition is fatally
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`deficient, and cannot be instituted.
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`CBM2016-00100
`Patent No. 8,805,825
`Ford fails to demonstrate—and cannot demonstrate—that the
`B.
`claims are directed to a financial product or service under application of
`the correct standard.
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`Ford argues generically that claims 1, 6, and 11 “expressly cover the data
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`processing . . . of financial products.” (Petition, p. 11.) But Ford never identifies
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`specific claim language that is directed to methods and apparatuses of particular
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`types and with particular uses “in the practice, administration, or management of a
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`financial product or service,” as required by the statute, and fails to show that
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`claims 1, 6, and 11 are directed to CBM review eligible subject matter. This alone
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`is sufficient to find that Ford has failed to demonstrate CBM review eligibility of
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`the ’825 patent.
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`Further, Ford’s arguments viewed through the lens of the correct standard
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`for CBM review eligibility remain deficient. Ford’s characterization implies that
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`anything related to the purchase of an automobile would be CBM-eligible. Yet this
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`cannot be. For example, a new method of printing documents in triplicate may be
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`utilized when purchasing an automobile, but such a printing method would hardly
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`be CBM-eligible. This is akin to Unwired Planet’s example of a light bulb in a
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`bank vault: “The patent for a novel lightbulb that is found to work particularly well
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`in bank vaults does not become a CBM patent because of its incidental or
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`complementary use in banks.” Unwired Planet, No. 2015-1812, slip op. at 12.
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`CBM2016-00100
`Patent No. 8,805,825
`Rather, the court’s rationale in Unwired Planetmirrors the present case
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`remarkably closely. As stated in Unwired Planet,
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`[I]t 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 of a
`good or service. All patents, at some level, relate to
`potential sale of a good or service . . . . It is not enough
`that a sale has occurred or may occur, or even that the
`specification speculates such a potential sale might occur.
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`Unwired Planet, No. 2015-1812, slip op. at 12.
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`Ford’s argument that the ’825 patent is CBM eligible simply because the
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`invention could be used to configure an automobile that may ultimately be sold
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`must fail for the same reasons provided in Unwired Planet.
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`The balance of Ford’s argument hinges solely on the term “attributes”
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`recited in claims 1, 6, and 11 and alleges that one attribute type of many possible
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`attribute types can be “financial attributes such as price and cost,” which is not
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`found in any claim language. (Petition, pp. 7 and 10-11.)2 However, none of the
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`cited claims 1, 6, and 11 provide any limitations that are specifically directed to the
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`2 Ford makes similar arguments with regard to claims 1, 6, and 11. The
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`deficiencies in Ford’s petition are the same for each claim.
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`CBM2016-00100
`Patent No. 8,805,825
`practice, administration, or management of a financial product or service. While
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`the claims recite “attributes,” the claims do not specifically recite “price” or “cost.”
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`The recited attributes can take on many forms, as shown in TABLE 2 of the ’825
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`patent, reproduced below:
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`
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`The possible attribute types of TABLE 2 are only exemplary. Other types of
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`attributes, including attribute types that are clearly not financial in nature, may be
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`used. (Franke Decl., para. 42.) Accordingly, the claims have application in
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`“‘business environments across sectors’ with ‘no particular relation to the financial
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`services sector,’ which the legislative history indicates is outside the scope of
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`covered business method patent review.” FedEx Corp. v. Ronald A. Katz Tech.
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`Licensing, L.P., CBM2015-00053, Paper 9 at 10 (PTAB June 29, 2015) (citing 157
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`Cong. Rec. S5441 (daily ed. Sept. 8, 2011)).
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`Ford forms its entire CBM eligibility arguments on the basis that “attributes”
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`can be price or cost. However, since cost or price need not be one of the attributes
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`considered in the claims and is only provided in the specification as an example
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`CBM2016-00100
`Patent No. 8,805,825
`attribute type (Franke Decl., para. 49), there is an insufficient relationship between
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`Ford’s citations to the specification that Ford purports supports CBM review
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`eligibility and the actual claim language recited in claims 1, 6, and 11. See Global
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`Tel*Link Corp. v. Securus Techs., Inc., CBM2015-00145, Paper 49 at 17 (citing
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`Tagged, Inc. v. Gonzalez, CBM2015-00075, slip op. at 7 (PTAB Aug. 20, 2015)
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`(Paper 8)) and Facebook, Inc. et al. v. Skky LLC, CBM2016-00091, Paper 7, at 13-
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`14 (PTAB November 23, 2016) (citing Unwired Planet).)
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`Claims 1, 6, and 11 are used to “generate one or more attribute prioritized
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`configuration answers to one or more attribute-based configuration queries” (see
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`claim 1), but, like in Tagged where “the use of the claimed system and method is
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`independent of the subject of the Host Website,” Tagged, CBM2015-00075, Paper
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`8 at 7, the use of the claimed systems and methods of the ’825 patent is agnostic to
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`the specific data within the attribute field. (Franke Decl., para. 42; Ex. 1001, 1:50-
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`60 and 6:11-16.)3 As such, Ford has completely failed to satisfy its burden of
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`3 Ford’s position on this issue is entirely unsupported by expert testimony.
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`While 37 C.F.R. § 42.208(c) notes that “a genuine issue of material fact created by
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`such testimonial evidence will be viewed in the light most favorable to the
`
`petitioner solely for purposes of deciding whether to institute a post-grant review,”
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`there are no issues of material fact on this point -- Ford has failed to provide any
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`factual support for its assertions, while Versata has included the detailed testimony
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`CBM2016-00100
`Patent No. 8,805,825
`showing how the claims are directed to methods or apparatuses used in the
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`practice, administration, or management of financial products or services as
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`required by Section 18.
`
`Ford’s reliance on “express” disclosures of financial products or
`C.
`services is based on disclaimed claims.
`
`Additionally, several of Ford’s arguments for CBM review eligibility rely on
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`features of claims 5, 10, and 15 of the ’825 patent. (see Petition, pp. 10-11.) These
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`arguments cannot be given any weight in considering whether the ’825 patent is
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`eligible for CBM review.
`
`Versata filed a statutory disclaimer under 37 C.F.R. § 1.321(a) that included
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`claims 5, 10, and 15 on October 28, 2016. (Ex. 2009, Statutory Disclaimer.) 37
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`C.F.R. § 42.207(e) provides that “[t]he patent owner may file a statutory disclaimer
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`under 35 U.S.C. 253(a) in compliance with § 1.321(a), disclaiming one or more
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`claims in the patent.” The rule adds that “[n]o post-grant review will be instituted
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`based on disclaimed claims.”
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`This rule applies to CBM review, as it is not excluded by 37 C.F.R. §
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`42.300(a), which states that “[a] covered business method patent review is a trial
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`subject to the procedures set forth in subpart A of this part and is also subject to the
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`of Dr. Franke on this point. Accordingly, the Board should accord full weight to
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`Dr. Franke’s testimony.
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`CBM2016-00100
`Patent No. 8,805,825
`post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201,
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`42.202, and 42.204.” See AT&T Mobility LLC v. Intellectual Ventures II LLC,
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`CBM2015-00185, Paper 10, p. 10 (PTAB May 4, 2016) (“for the purposes of
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`whether or not to institute a covered business method patent review, we treat [the
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`disclaimed claims] as never having existed, and we will not consider the now-
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`statutorily disclaimed claims in our determination”).
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`Accordingly, Ford’s arguments regarding claims 5, 10, and 15 (which are
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`used in part to support its arguments regarding claims 1, 6, and 11 (see Petition, pp.
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`10-11) cannot form the basis of CBM review eligibility. Ford does not specifically
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`discuss any other claims, and thus cannot satisfy its burden of showing CBM
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`eligibility.
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`D. The claims of the ’825 patent recite a technological invention.
`Regardless of the aforementioned deficiencies in Ford’s petition, the ’825
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`patent is furthermore ineligible for CBM review because claims 1, 6, and 11 are
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`directed to a technological invention.4
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`The definition of “technological invention” in 37 C.F.R. § 42.301(b)
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`provides a two-factor test for determining whether a claim recites a technological
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`4 Ford does not address claims 6 and 11 in its remarks, focusing solely on
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`claim 1.
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`CBM2016-00100
`Patent No. 8,805,825
`invention: whether the claimed subject matter as a whole (1) recites a technological
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`feature that is novel and unobvious over the prior art; and (2) solves a technical
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`problem using a technical solution.
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`Ford has failed to address the technical solution to a technical problem
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`provided by the claimed subject matter of the ’825 patent. And Ford has failed to
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`support its position that the claimed technological feature is anticipated or obvious.
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`Ford provides no discussion regarding the technical solution
`1.
`to a technical problem of the ’825 patent claims.
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`Ford wholly failed to address one of the factors in the two-factor test for a
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`technological invention. Ford provides absolutely no discussion regarding the ’825
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`patent’s technical solution of a technical problem, focusing solely on the question
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`of novelty. Nor is Ford’s expert cited in any discussion of this issue.5 This abject
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`5 Ford’s position on this issue is entirely unsupported by expert testimony.
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`While 37 C.F.R. § 42.208(c) notes that “a genuine issue of material fact created by
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`such testimonial evidence will be viewed in the light most favorable to the
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`petitioner solely for purposes of deciding whether to institute a post-grant review,”
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`there are no issues of material fact on this point -- Ford has failed to provide any
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`factual support for its assertions, while Versata has included the detailed testimony
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`of Dr. Franke on this point. Accordingly, the Board should accord full weight to
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`Dr. Franke’s testimony.
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`failure to analyze a required element leaves the Board without a complete analysis
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`of the issue, as the Board cannot fill in gaps or “adopt arguments on behalf of
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`petitioners that could have been, but were not, raised by the petitioner.” In re
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`Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
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`Ford’s petition must thus be denied as deficient.
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`Further, Claim 1 recites, in part, “processing the one or more attribute-based
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`configuration queries, configuration rules, and attribute based preference algorithm
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`using a combined configuration rules-attributes model and a configuration-rules
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`processing engine to calculate valid configuration answers in accordance with the
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`combined configuration rules-attributes model, wherein a plurality of the
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`configuration rules define relationships between parts of the product and a plurality
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`of attributes represent details about the parts.”
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`A configuration rules-attributes model, as recited in claim 1, is able to
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`process a configuration query to produce valid answers. (Franke Decl., para. 48;
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`Ex. 1001, 5:13-19.) This model is a particular software construct specifically
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`arranged to handle such queries. (Franke Decl., para. 48; Ex. 1001, 5:13-19.) Dr.
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`Franke’s declaration highlights that this software construct is based on a technical
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`problem -- configuration processing when configuration queries can be made not
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`only of the parts, but of attributes of the parts. (Franke Decl., para. 29.) And the
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`declaration further highlights a technical solution to this technical problem -- the
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`use of a combined configuration rules-attribute system with an integrated
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`configuration model
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`to efficiently
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`identify and attribute prioritize valid
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`configuration answers to attribute-prioritized configuration queries. (Id., para. 37.)
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`Ford fails to provide any supported reason for concluding
`2.
`that the technological feature of the ’825 patent claims is
`anticipated or obvious.
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`The subject matter of claim 1 as a whole recites a technological feature --
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`specifically at least “processing the one or more attribute-based configuration
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`queries, configuration rules, and attribute based preference algorithm using a
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`combined configuration rules-attributes model and a configuration-rules processing
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`engine to calculate valid configuration answers in accordance with the combined
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`configuration rules-attributes model, wherein a plurality of the configuration rules
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`define relationships between parts of the product and a plurality of attributes
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`represent details about the parts” -- that is novel and unobvious over the prior art.
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`In considering the file history of the ’825 patent, Ford argues that
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`“[c]ombining the configuration model with the attribute information model appears
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`to be the only difference between the system described in the ’825 Patent and the
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`prior art.” (Petition, p. 16.) Ford cites to the Examiner’s conclusion that the applied
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`art does not explicitly teach or suggest a “combined configuration rules-attributes
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`model” in order to conclude that “the only purported advancement described in the
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`’825 Patent is taking a known configuration model and a known attribute
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`information model and combining them.” (Petition, p. 17 (emphasis in original).)
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`Ford’s lone cited expert testimony is found at page 14 of the Petition,
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`referencing paragraph 28 of the McGuinness declaration. That paragraph reads:
`
`The claims of the ’825 Patent simply add conventional
`computer components to well-known business practices.
`Specifically, the ’825 Patent attempts to combine a
`configuration model that uses rules with a prioritization
`approach that uses attribute values to the process of
`configuration selection using a computer. For example,
`claim 1 includes: (1) receiving attribute-based queries;
`(2) processing those queries; (3) determining and storing
`values of combinations of attributes; (4) retrieving the
`stored values; (5) receiving a selection of an attribute; (6)
`prioritizing valid configuration answers based on one or
`more of a plurality of attributes; and (7) providing at least
`a subset of configuration answers that are prioritized by
`one or more of the attributes. (Ex. 1001 [’825 Patent] at
`Claim 1.) Claim 1’s reference to a “computer system
`programmed with code stored in memory and executable
`by a processor of the computer system,” recites no new
`hardware, machine or technology to perform the claimed
`method. These references are nothing more
`than
`recitation of known techniques.
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`Ex. 1002, McGuinness Declaration, para. 28.
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`Ford’s expert support is conclusory and entirely unfounded. This paragraph
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`simply recites the claim and alleges without any substantive evidence that the
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`claim elements were known. And as Ford carries the burden of showing CBM
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`review eligibility, such conclusory statements must be discounted. In fact, Ford’s
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`entire discussion in the petition (see Petition, pp. 12-17) regarding combining a
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`configuration model with an attribute information model consists solely of
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`unsubstantiated statements that such a combination would have been obvious, and
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`is rife with impermissible hindsight bias. Ford has failed to present even a basic
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`discussion of how a configuration model and an attribute information model would
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`be combined in order to render the technological features of claim 1 as a whole
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`anticipated or obvious.
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`Nor (even if properly analyzed) would it have been obvious to simply
`
`combine a configuration model and an attribute information model to obtain the
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`claimed technological feature of, in part, a combined configuration-rules attributes
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`model. Creating a combined configuration rules-attributes model requires more
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`than the simple merger of a configuration model with an attribute information
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`model. (Franke Decl., para. 54.) Ford has provided no evidence to show how this
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`merger would be performed. And indeed, such a merger would not have been so
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`simple. This new model must be able to answer a new type of attribute-based
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`configuration query, requiring a structural change in the model to integrate rule and
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`attribute information such that this new type of query can be answered. (Id.) This
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`structural change is evident in the two trie structures shown by way of example in
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`FIG. 2 and