`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`FORD MOTOR COMPANY
`Petitioner,
`
`v.
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`VERSATA SOFTWARE, INC.
`Patent Owner.
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`______________
`
`U.S. Patent No. 7,739,080
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`CBM Case No.: CBM2016-00101
`
`______________
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`
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`FORD MOTOR COMPANY’S PRELIMINARY REPLY IN SUPPORT OF
`ITS PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-
`SMITH AMERICA INVENTS ACT
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`
`
`
`
`
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
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`
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`Patent Owner asserts that the claims of the ‘080 Patent do not fall within AIA
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`§ 18 under Unwired Planet, LLC v. Google, Inc., 841 F.3d 1376 (Fed. Cir. 2016).
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`(Paper 6 at 6–14.)
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`Before Unwired Planet, the PTO had interpreted AIA § 18(d)(1) to include
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`patents that claim “activities that are financial in nature, incidental to a financial
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`activity or complementary to a financial activity.” See, e.g., Unwired Planet, 841
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`F.3d at 1380, n.6. Unwired Planet rejected the “incidental to” and “complementary
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`to” parts of the PTO’s interpretation. Id. at 1382.1 But, apart from quoting the
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`statutory language and providing a few negative examples, the Federal Circuit did
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`not provide a new CBM test. Instead, it vacated and remanded to the Board.
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`1 Although not dispositive here, the court in Unwired Planet did not give proper
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`Chevron deference to the PTO’s interpretation of the CBM statute, namely that “the
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`definition of covered business method patent was drafted to encompass patents
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`‘claiming activities that are financial in nature, incidental to a financial activity or
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`complementary to a financial activity.’” Unwired Planet, 841 F.3d at 1380 n.6; see
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`Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1337–38 (Fed. Cir. 2008). But even
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`excluding the PTO’s “incidental to” and “complementary to” interpretation, the ‘080
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`patent claims cover finance-related activities as explained infra.
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`1
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
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`
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`Patent Owner argues that the ‘080 patent claims are not CBM claims because
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`they have “no particular relation to the financial services sector.” (Paper No. 6 at
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`12.) But that narrow test was rejected in Versata Dev. Grp. v. SAP Am., Inc., 793
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`F.3d 1306 (Fed. Cir. 2015). In Versata, the Federal Circuit resolved “[a] basic
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`disagreement between the parties to this case [about] how broadly this [AIA
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`§ 18(d)(1)] language should be read.” Id. at 1323. The Federal Circuit agreed with
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`the PTO that “the definition of ‘covered business method patent’ is not limited to
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`products and services of only the financial industry, or to patents owned by or
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`directly affecting the activities of financial institutions such as banks and brokerage
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`houses. The plain text of the statutory definition contained in § 18(d)(1) . . . on its
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`face covers a wide range of finance-related activities.” Id. at 1325 (emphasis
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`added). Unwired Planet does not criticize or overturn this holding in Versata.
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`The claims of the ‘080 patent relate to the “administration or management of
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`a financial product or service,” under AIA § 18(d)(1). The claims consolidate
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`configuration models for “a product,” e.g., in the financial services industry: “Many
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`embodiments of the present invention have application to a wide range of industries
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`including . . . financial services.” (Ex. 1001 at 18:3-9.) The identical text was
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`analyzed in Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Paper 8 at 5
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`(PTAB Oct. 24, 2013). Versata, the Patent Owner here, also owned the patent at
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`issue in Volusion, U.S. Patent No. 6,834,282. After reviewing the ‘282 patent’s
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`2
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
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`
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`identical text, the Board readily found that “at least one claim [of the ‘282 patent]
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`covers data processing or other operations used in the practice, administration, or
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`management of a financial service.” Id. at 6. That finding did not depend on the
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`“incidental to” or “complementary to” language rejected in Unwired Planet.
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`Unwired Planet does not affect the Volusion analysis. The claims of the ‘080
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`patent cover finance-related activities, namely the administration and management
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`of configuration models used for financial products and services. As in Volusion,
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`Patent Owner’s Petition in the present case did “not address the explicit statement in
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`the [‘080] patent concerning ‘financial services’ that was pointed out in the Petition
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`[Paper 1 at 4].” Volusion, Paper 8 at 5.
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`In addition, Unwired Planet does not bar CBM review for a claim that covers
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`the practice, administration, or management of a financial product or service merely
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`because that claim might also cover non-financial products or services. No Federal
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`Circuit case has so held and the CBM statute contains no such limitation. AIA § 18.
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`Under Unwired Planet, Versata, and Volusion, the ‘080 patent claims are
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`CBM claims because they cover “data processing or other operations used in the
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`practice, administration, or management of a financial service.”
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`Dated: January 18, 2017
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`
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`
`
`
`
` /Thomas A. Lewry/
`Thomas A. Lewry (Reg. No. 30,770)
`Attorney for Petitioner
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`3
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
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`
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`Certificate of Service
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`The undersigned hereby certifies that on January 18, 2017 a complete and
`entire copy of FORD MOTOR COMPANY’S PRELIMINARY REPLY IN
`SUPPORT OF ITS PETITION FOR POST-GRANT REVIEW (COVERED
`BUSINESS METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE
`LEAHY-SMITH AMERICA INVENTS ACT, was served via electronic mail to
`PTAB@skgf.com;
`rsterne-PTAB@skgf.com;
`sbezos-PTAB@skgf.com;
`holoubek@skgf.com;
`jmutsche-PTAB@skgf.com;
`jtuminar-PTAB@skgf.com;
`kchambers@tcchlaw.com; sharoon.saleem@jonesspross.com which will serve the
`following counsel of record:
`
`
`BACK-UP COUNSEL
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`Kent B. Chambers
`Terrile, Cannatti, Chambers & Holland, LLP
`11675 Jollyville Road, Suite 100
`Austin, TX 78759
`
`Sharoon Saleem
`Jones & Spross, PLLC
`1605 Lakecliff Hills Ln., Suite 100
`Austin, TX 78732-2437
`
`
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`Respectfully submitted,
`
`
`
` /Thomas A. Lewry/
`Thomas A. Lewry (Reg. No. 30,770)
`Christopher C. Smith (Reg. No. 59,669)
`John S. LeRoy (Reg. No. 48,158)
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`4
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`LEAD COUNSEL
`Robert Greene Sterne
`Sterne, Kessler, Goldstein & Fox
`PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
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`
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`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`Jonathan D. Nikkila (Reg. No. 74,694)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
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`Attorneys for Petitioner
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`5