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. 7,739,080
`
`CBM Case No.: CBM2016-00101
`
`______________
`
`
`
`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 1-22 OF U.S. PATENT NO. 7,739,080)
`
`
`
`
`
`

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`Case No.: CBM2016-00101
`Patent No.: 7,739,080
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`
`
`
`Table of Contents
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`Atty. Dkt. No.: FPGP0131CBMR1
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`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
`
`Introduction ...................................................................................................... 1
`
`The ‘080 Patent ................................................................................................ 1
`
`I.
`
`II.
`
`III.
`
`Standing Requirements Under 37 C.F.R. §42.304 .......................................... 2
`
`A.
`
`B.
`
`Petitioner meets the eligibility requirements of §42.302 ...................... 2
`
`The ‘080 Patent is a Covered Business Method Patent ........................ 2
`
`1.
`
`2.
`
`The ‘080 patent claims a “financial product or service” ............ 2
`
`Claims 1-22 are not directed to a “technological
`invention” .................................................................................... 6
`
`C.
`
`Challenged Claims – 37 C.F.R. §42.304(b)(1) ..................................... 9
`
`D. Grounds of Challenge – 37 C.F.R. §42.304(b)(2) ................................ 9
`
`IV. Person Having Ordinary Skill in the Art ......................................................... 9
`
`V.
`
`Claim Construction – 37 C.F.R. §42.304(b)(3) .............................................10
`
`VI. The Claims Are Unpatentable Under The Statutory Grounds Identified
`Above – 37 C.F.R. §42.304(b)(4) ..................................................................10
`
`A. Ground 1 – Claims 1-22 are unpatentable under 35 U.S.C. §101 ......10
`
`1.
`
`Step One: The ‘080 patent claims are directed to a
`patent-ineligible concept – an abstract idea ..............................12
`
`a.
`
`b.
`
`Independent claims 1, 3, 4, and 22 ................................. 14
`
`The dependent claims ..................................................... 22
`
`2.
`
`Step Two: The ‘080 patent claims lack an inventive
`concept ......................................................................................28
`
`i
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`Patent No.: 7,739,080
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`VII. Ground 2 – Claims 2, 10, and 16 are indefinite under 35 U.S.C. §112,
`¶2
` .............................................................................................................29
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`Atty. Dkt. No.: FPGP0131CBMR1
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`VIII. Ground 3 – Claim 22 is an improper means-plus-function claim under
`35 U.S.C. § 112, ¶ 6 and indefinite under § 112, ¶ 2 ....................................34
`
`IX. Conclusion .....................................................................................................42
`
`X.
`
`Fee Statement .................................................................................................42
`
`
`
`
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`ii
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`Case No.: CBM2016-00101
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`
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`List of Exhibits
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Description
`
`1004
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,739,080
`1002 Versata Complaint in the Versata lawsuit
`1003 Versata Counterclaim in the Ford lawsuit
`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
`1005 U.S. Patent No. 7,200,582
`
`1006 Declaration of Deborah L. McGuinness
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`iii
`
`
`
`
`
`Identifier
`
`‘080 patent
`
`
`
`AIA Legislative
`History Guide
`
`McDermott
`
`
`
`
`
`
`
`
`
`‘582 patent
`McGuinness
`Decl.
`‘080 file history
`File history of the ‘080 patent
`1007
`
`1008 McGuinness Curriculum Vitae
`1009
`Stefik, Introduction to Knowledge Systems (1995) Stefik
`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)
`Versata’s identification of “means” structure for
`claim 22 of the ‘080 patent from the Ford lawsuit
`Versata’s Opening Claim Construction Brief in
`the Ford lawsuit
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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. 7,739,080 (“the ‘080 Patent”) is being asserted by Versata in the
`
`Ford lawsuit, along with seven additional patents. In connection with the Ford
`
`lawsuit, Versata Software, Inc. has stated that it “holds all right, title, and interest
`
`in and to the ‘080 Patent.”1 (Ex. 1003 at 2, 36.)
`
`The ‘080 Patent was also asserted in Versata Dev. Grp., Inc. v. Ford Motor
`
`Co., Case No. 4:15-cv-00316-RC-CMC (“the Versata lawsuit”). (Exh. 1002.) The
`
`Versata lawsuit was dismissed without prejudice on December 3, 2015.
`
`Petitioner has not filed any concurrent petitions concerning the ‘080 Patent.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints Thomas A. Lewry (Reg. No. 30,770) of Brooks
`
`Kushman P.C. as lead counsel, and appoints John S. LeRoy (Reg. No. 48,158),
`
`
`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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`Frank A. Angileri (Reg. No. 36,733), John P. Rondini (Reg. No. 64,949),
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`Atty. Dkt. No.: FPGP0131CBMR1
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`Christopher C. Smith (Reg. No. 59,669), 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
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`FPGP0131CBMR1@brookskushman.com.
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`
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`v
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`Case No.: CBM2016-00101
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`Introduction
`
`
`
`I.
`
`The Petitioner, Ford Motor Company (“Ford”), asks the Board to decide that
`
`claims 1-22 of the ‘080 patent are unpatentable under 35 U.S.C. §101 and that
`
`claims 2, 10, and 16 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 ‘080
`
`patent is unpatentable.” AIA §18(a)(1) and 35 U.S.C.§324(a).
`
`II. The ‘080 Patent
`
`The ’080 Patent is titled “Consolidation of Product Data Models.” The
`
`patent application was filed on April 19, 2004, which is the earliest priority date
`
`for the ‘080 patent. The patent issued on June 15, 2010.
`
`The ‘080 patent describes and claims automated consolidation of
`
`“configuration models” used to make a “configurable product” that a consumer can
`
`purchase. (Ex. 1001 at 1:14.) As the patent admits, and as Dr. McGuinness
`
`explains, systems for consolidating configuration models to configure products
`
`was old when the application for the ‘080 patent was filed. (Ex. 1001, ‘080 patent,
`
`Figs 1-6 and accompanying text; Ex. 1006, McGuiness Decl., ¶¶22-25.)
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`1
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`III. Standing Requirements Under 37 C.F.R. §42.304
`
`A.
`
`Petitioner meets the eligibility requirements of §42.302
`
`In the Versata lawsuit, Versata sued Ford for infringing, inter alia, the ‘080
`
`patent. (Ex. 1002.) In addition, in the Ford suit, Versata counterclaimed for
`
`infringement, inter alia, of the ‘080 patent. (Ex. 1003, pp. 43-44.)
`
`Ford is not estopped from challenging the claims on the grounds identified
`
`in this petition.
`
`Ford has not filed a civil action challenging the validity of a claim of the
`
`patent.
`
`B.
`
`The ‘080 Patent is a Covered Business Method Patent
`
`1.
`
`The ‘080 patent claims a “financial product or
`service”
`
`The American Invents Act (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 . . . .” AIA §18(d)(1); see also 37
`
`C.F.R. §42.301. The definition of a covered business method patent is broad. The
`
`“legislative history explains that the definition of covered business method patent
`
`was drafted to encompass patents ‘claiming activities that are financial in nature,
`
`incidental to a financial activity or complementary to a financial activity.’” See
`
`2
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`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`
`Reg. 48,734, 48,735 (Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed.
`
`Sept. 8, 2011) (statement of Sen. Schumer)). 2
`
`The PTO 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.” 77 Fed. Reg. 48,735.
`
`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 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.)
`
`A patent need have only one claim directed to a covered business method to
`
`be eligible for review. 77 Fed. Reg. at 48 ,736 (Response to Comment 8).
`
`
`2 Unless otherwise stated, all emphasis added.
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`3
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`The PTAB has held that 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) (covering “a computer
`
`system and a database that stores product configurations and product configuration
`
`information”).
`
`The ‘080 patent describes and claims automated consolidation of
`
`“configuration models” used to make a “configurable product” that a consumer can
`
`purchase. (Ex. 1001 at 1:14.) As a primary example, the patent discusses
`
`configuring an automobile for sale (id., semble), but the invention also applies to
`
`“computer hardware and software manufacturing and sales,” “financial services,”
`
`“telecommunications sales,” and “medical and pharmaceutical sales,” among
`
`others. (Id. at 18:3-9.)
`
`Each configuration model requires product “families” that can represent
`
`“groups such as market areas. For example, a family can include a marketing
`
`region such as USA, Canada, Mexico, Europe, or any other region.” (Ex. 1001 at
`
`1:22-26.) The configuration models also require product “features”: “A feature
`
`represents an option that can be ordered on a product.” (Id. at 1:38-39.)
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`4
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`All of the ‘080 patent claims are directed to configuring salable products that
`
`a customer can purchase. The independent claims confirm this. Claim 1 recites,
`
`“A method of using a computer system to consolidate multiple configuration
`
`models of a product . . . .” (Ex. 1001 at 18:16-17.) Claim 3 recites, “A computer
`
`system configured for consolidating multiple configuration models of a product
`
`. . . .” (Id. at 18:54-55.) Claim 4 recites, “A tangible, computer readable medium
`
`having instructions encoded therein and executable by a processor to consolidate
`
`multiple configuration models of a product . . . .” (Id. at 19:24-26.) Claim 22
`
`recites, “A computer system for performing an automatic consolidation of multiple
`
`configuration models of a configurable product . . . .” (Id. at 22:14-16.) The
`
`claims state the purpose of the invention is to answer “configuration questions
`
`related to the product. (Id. at 18: 48-49, 19: 22-23, 19:55-56, 22:44-45, emphasis
`
`added.)
`
`Like the patent claims at issue in WTS Paradigm, GSI, and Volusion, the
`
`configuration process/system claimed in the ‘080 patent is at least “incidental to”
`
`or “complementary to” a financial activity, such as sales of automobiles,
`
`computers, financial services, or other products. The claims enable products to be
`
`configured so they can be sold. Therefore, the ‘080 patent “claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
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`the practice, administration, or management of a financial product or service . . . .”
`
`AIA §18(d)(1).
`
`2.
`
`Claims 1-22 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. See, e.g., 77 Fed. Reg., 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 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.
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`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.
`
`77 Fed. Reg. 48,756, 48,764.
`
`The ’080 patent is not directed to a technological invention because
`
`accomplishing a business process or method (e.g., consolidating configuration
`
`models) is not technological, whether or not that process or method is novel. (Ex.
`
`1004, p. 634, “The ‘patents for technological inventions’ exception . . . is not
`
`meant to exclude patents that use known technology to accomplish a business
`
`process or method of conducting business—whether or not that process or method
`
`appears to be novel.”). Moreover, “a patent is not a technological invention
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`because it combines known technology in a new way to perform data processing
`
`operations.” (Id., p. 635.)
`
`The ‘080 patent describes and claims automating what had been done for
`
`many years, i.e., consolidating product configuration models to define a buildable
`
`product. The patent admits that it was old to consolidate multiple configuration
`
`models. (See, e.g., Ex. 1001, “prior art” Figures 1-6 and accompanying text.) The
`
`claimed invention differs merely because “[c]onventional consolidation processes
`
`do not automatically detect unspecified configuration buildables and correct
`
`them.” (Id. at 4:5-7, emphasis added.) Notably, the patent states that, if “an
`
`incompatibility is detected that cannot be automatically resolved, then the
`
`configuration models should not be combined.” (Id. at 7:14-16.) In other words,
`
`the automated process/system claimed in the ‘080 patent may work or it may not.
`
`The claims add “a computer system,” “a processor,” “a memory,” a
`
`“computer readable medium,” which automate the old process, but none of these
`
`generic computer features is novel. The invention is not limited to any particular
`
`hardware or software implementation: “Embodiments of the model consolidation
`
`system 700 can be implemented on a computer system such as a general-purpose
`
`computer . . . .” (Ex. 1001 at 16:66-17:1.) The “general-purpose computer” may
`
`be “any type of computer system or programming or processing environment.”
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`8
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`(Ex. 1001 at 17:59-61.) Thus, the ’080 patent is not directed to a technological
`
`invention.
`
`C. Challenged Claims – 37 C.F.R. §42.304(b)(1)
`
`Petitioner requests review under 35 U.S.C. §321 and AIA §18 of claims 1-22
`
`of the ‘080 Patent and asks the Patent Trial and Appeal Board (“PTAB”) to cancel
`
`those claims as unpatentable.
`
`D. Grounds of Challenge – 37 C.F.R. §42.304(b)(2)
`
`Ford challenges all claims as unpatentable under 35 U.S.C. §101. Ford
`
`challenges claims 2, 10, and 16 as indefinite under 35 U.S.C. §112, ¶2. Ford
`
`challenges claim 22 as an improper means-plus-function claim under 35 U.S.C.
`
`§ 112, ¶ 6 and indefinite under § 112, ¶ 2.
`
`IV. Person Having Ordinary Skill in the Art
`
`The relevant field of art is product configuration software. A person having
`
`ordinary skill in the art would have: (1) a bachelor’s degree in computer science,
`
`electrical engineering, computer engineering, or similar technical field, and some
`
`familiarity with configuration systems, or (2) equivalent experience in the design
`
`or implementation of configuration systems. (Ex. 1006, McGuinness Decl., ¶20.)
`
`In this Petition, the person of ordinary skill in the art is sometimes referred to as a
`
`“skilled artisan” or a “person skilled in the art.”
`
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`V. Claim Construction – 37 C.F.R. §42.304(b)(3)
`
`“A claim in an unexpired patent . . . shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. §42.100(b). For purposes of this petition, Ford does not believe any terms
`
`in the challenged claims require construction beyond their plain and ordinary
`
`meaning under the broadest reasonable interpretation standard for this proceeding.
`
`VI. The Claims Are Unpatentable Under The Statutory Grounds
`Identified Above – 37 C.F.R. §42.304(b)(4)
`
`A. Ground 1 – Claims 1-22 are unpatentable under 35 U.S.C.
`§101
`
`“Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof, may obtain a patent therefor, subject to the conditions and requirements of
`
`this title.” 35 U.S.C. §101. Supreme Court precedents provide three specific
`
`exceptions to the broad categories of §101: laws of nature, physical phenomena,
`
`and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010). “The ‘abstract
`
`ideas’ category embodies the longstanding rule that ‘[a]n idea of itself is not
`
`patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014)
`
`(citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
`
`When a patent claims abstract ideas, like the rearrangement of data at the
`
`heart of the ‘080 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
`
`to “a particular technological environment” or to add “insignificant post solution
`
`activity” or “well-understood, routine, conventional activity.” Bilski, 561 U.S. at
`
`610-11; Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294
`
`(2012). Instead, a claim involving an unpatentable concept must contain “other
`
`elements or a combination of elements, sometimes referred to as the ‘inventive
`
`concept,’” sufficient to prevent patenting the underlying concept itself. Mayo, 132
`
`S.Ct. at 1294; see also Flook, 437 U.S. at 594. Another way a claim may recite
`
`“significantly more” than an abstract idea is to be “tied to a particular machine or
`
`apparatus” or “transform a particular article into a different state or thing.” Bilski,
`
`561 U.S. at 602-604. Under any of these analyses, the ‘080 claims fail to 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, and abstract
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`ideas from those that claim patent-eligible applications of those concepts.” Alice,
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`134 S.Ct. at 2355. In the first step, “we determine whether the claims at issue are
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`directed to one of those patent-ineligible concepts.” Id. “If so, we then ask,
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`‘[w]hat else is there in the claims before us?’” Id. (quoting Mayo, 132 S.Ct. at
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`1297). In the second step, “we consider the elements of each claim both
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`individually and ‘as an ordered combination’ to determine whether the additional
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`elements ‘transform the nature of the claim’ into a patent-eligible application.” Id.
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`Step two of the analysis may be described as “a search for an ‘inventive
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`concept’—i.e., an element or combination of elements that is ‘sufficient to ensure
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`that the patent in practice amounts to significantly more than a patent upon the
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`[ineligible concept] itself.’” Id. (citing Mayo, 132 S.Ct. at 1294 (brackets in
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`original)).
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`1.
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`Step One: The ‘080 patent claims are directed to a
`patent-ineligible concept – an abstract idea
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`A claim is unpatentable under §101 when “[a]ll of [the claim’s] method
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`steps can be performed in the human mind, or by a human using a pen and paper.”
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`CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011);
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`see also, Volusion, CBM2013-00018, Paper 8 at 14-15 (“A method that consists of
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`steps that can be performed in the human mind, or by a human using a pen and
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`paper, is not patent eligible.”). As the ‘080 patent drawings make abundantly
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`clear, the process/system claimed in claims 1-22 can easily be done by a human
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`using pen and paper. Using a computer to perform these abstract steps does not
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`make them patentable. Alice, 34 S.Ct. at 2358; Versata Dev. Grp. v. SAP Am.,
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`Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (claims that require a “data source” or a
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`“computer storage medium” are not “inconsistent with the PTAB's finding that the
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`underlying process could be performed via pen and paper.”); Google Inc. v. Zuili,
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`CBM2016-00008 at 15-16 (2016) (“[E]ven when a claim requires the use of a
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`computer, the claim may nonetheless be directed to patent-ineligible subject matter
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`if it can be performed using a pen and paper or in the human mind.”).
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`The Federal Circuit recently explained that a relevant inquiry at step one is
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`“to ask whether the claims are directed to an improvement to computer
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`functionality versus being directed to an abstract idea.” Enfish, LLC v. Microsoft
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`Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. May 12, 2016). Enfish contrasted
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`claims “directed to an improvement in the functioning of a computer” with claims
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`“simply adding conventional computer components to well-known business
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`practices,” or claims reciting “use of an abstract mathematical formula on any
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`general purpose computer” or “a purely conventional computer implementation of
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`a mathematical formula,” or “generalized steps to be performed on a computer
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`using conventional computer activity.” Id. at *16-17.
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`The claims of the ’080 patent “simply add[] conventional computer
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`components to well-known business practices,” id., namely attempting to automate
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`the consolidation of product configuration models. The ‘080 patent is not about
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`improving the functioning of a computer. To the contrary, the ‘080 patent admits
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`that consolidating product configuration models was old, and that the “new”
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`automation process may work, or may not work. (See, Ex. 1001, “prior art”
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`Figures 1-6 and accompanying text, 4:5-7, 7:14-16.) Automating a prior art
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`process with well-known computer components does not make an invention
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`patentable.
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`a.
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`Independent claims 1, 3, 4, and 22
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`Claim 1 is representative of the independent claims of the ‘080 patent:
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` 1. A method of using a computer system to consolidate multiple
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`configuration models of a product, the method comprising:
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`performing with the computer system:
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`[1] identifying a conflict between at least two of the configuration
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`models, wherein the configuration models are organized in
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`accordance with respective directed acyclic graphs, each
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`configuration model includes at least one ancestor configuration
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`model family space and a child configuration model family
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`space below the ancestor configuration model family space, a
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`first of the conflicting configuration models comprises an
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`ancestor configuration model family space that is different than
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`an ancestor configuration model family space of a second of the
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`conflicting configuration model, and each child configuration
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`model family space constrains the ancestor configuration model
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`family space above the child in accordance with configuration
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`rules of the configuration model to which the child belongs;
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`[2] extending at least one of the ancestor configuration model family
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`spaces of the conflicting configuration models so that the
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`ancestor configuration model family spaces of the first and
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`second conflicting configuration models represent the same
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`ancestor configuration model family space;
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`[3] removing from the child configuration model family space any
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`configuration space extended in the ancestor of the child
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`configuration family space; and
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`[4] combining the first and second configuration models into a single,
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`consolidated model that maintains a non-cyclic chain of
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`dependencies among families and features of families for use in
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`answering configuration questions related to the product.
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`The claim recites
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`the abstract
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`idea of consolidating
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`two product
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`configuration models using a computer by [1] identifying a conflict between
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`configuration models, [2] extending the configuration space in the “parent family,”
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`[3] removing the same configuration space in the “child family,” and [4]
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`combining the models. (Ex. 1006, McGuiness Decl., ¶29.) All steps of the
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`independent claims can be done by a human using pen and paper. (Ex. 1006,
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`McGuiness Decl., ¶30.) Using Figure 8, the patent explains that steps [1], [2], and
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`[3] can be drawn on paper. (Id.) Figure 8 is reproduced below with annotations
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`added showing claim steps [1] and [2]:
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`Ex. 1001, Figure 8
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`Figure 8 shows two configuration models (602 and 612) for an automobile.
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`The first three columns represent three families: “MKT,” “ENG,” and “SER.” (Ex.
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`1006, McGuiness Decl., ¶31.) As diagrammed, the MKT family is the parent of
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`the ENG family, which is the parent of the SER family. (Id.)
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`As can see readily seen, the human mind can perform step [1] of the claim
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`because a visual review of the drawing can detect the conflict between the ENG
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`family (606) of the Configuration Model 602 and the ENG family (616) of the
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`Configuration Model 612, which must be resolved before the two models can be
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`consolidated. (Ex. 1006, McGuiness Decl., ¶32.) As shown, the shading/release
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`status of “MKT1.ENG2” in the ENG Family of Configuration Model 602 differs
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`from that of “MKT1.ENG2” in the ENG Family of Configuration Model 612.
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`Specifically, in Configuration Model 602, “ENG: MKT1.ENG2” is released,
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`whereas it is not released in Configuration Model 612. (Exh. 1001, ‘080 patent at
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`9:9-10.) This conflict means that the two models cannot be combined without
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`some adjustment to one of the models. (Id.)
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`As the drawing (Figure 8) states, the conflict can be resolved (step [2]) by
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`first “adding space [MKT1:ENG2 (832)] to the ENG family” of Configuration
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`Model 612. (Ex. 1001, Figure 8.) Figure 8 plainly shows that a human can draw
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`the configuration models and perform claim step [2] using pen and paper. (Ex.
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`1006, McGuiness Decl., ¶33.)
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`Step [3], removing space from the child family space, is also drawn in
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`Figure 8 as shown below (annotations added). This step removes from the SER
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`(“child”) family the space added to the ENG (“ancestor”) family in step [2]. (Ex.
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`1006, McGuiness Decl., ¶34-35.) The release status of MKT1.ENG2.SER2
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`changes from released to unreleased. (Exh. 1001, ‘080 patent at 9:16-19.) As
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`illustrated in Figure 8, a human can show this change using pen and paper by
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`changing the shading of MKT1.ENG2.SER2 from shaded in Configuration Model
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`612 to unshaded in Adjusted Configuration Model 612. (Ex. 1006, McGuiness
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`Decl., ¶35.)
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`Ex. 1001, Figure 8
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`
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`The result of steps [2] and [3] leave the “Complete Model” (830) the same
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`as the Complete Model (620), as Figure 8 shows. Thus, the drawing of Figure 8
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`shows how a person with pen and paper could perform steps [2] and [3] by
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`extending space in the ENG Family and then removing that extended space from
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`the SER Family to create an Adjusted Configuration Model 822. (Ex. 1006,
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`McGuiness Decl., ¶35.)
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`Likewise, step [4] of the cla