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 CBM2016-00101
`Patent No. 7,739,080
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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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`CBM2016-00101
`Patent No. 7,739,080
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`TABLE OF CONTENTS
`TABLE OF CONTENTS ........................................................................................... i
`EXHIBIT LIST ......................................................................................................... ii
`I.
`INTRODUCTION ............................................................................................... 1
`II. THE ’080 PATENT TECHNOLOGY ................................................................ 2
`III. CLAIM CONSTRUCTION ............................................................................ 4
`A. “extending at least one of the ancestor configuration model family spaces”.. 5
`B. “removing [the added space] from the child configuration model family
`space…” .................................................................................................................. 5
`C. “inconsistencies between rules” ...................................................................... 6
`IV. THE ’080 PATENT IS NOT ELIGIBLE FOR CBM REVIEW .................... 6
`A. Ford relies on an incorrect standard for determining whether the claims are
`directed to a financial product or service. .............................................................. 7
`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. The claims of the ’080 patent recite a technological invention. ....................14
`V. FORD HAS NOT SHOWN THAT THE CLAIMS OF THE ’080 PATENT
`ARE MORE LIKELY THAN NOT UNPATENTABLE. ......................................21
`A. The claims of the ’080 patent are directed to statutory subject matter under
`35 U.S.C. § 101. ...................................................................................................22
`B. Ford has failed to demonstrate that claims 2, 10, and 16 are indefinite under
`35 U.S.C. § 112, second paragraph. .....................................................................34
`C. Claim 22 has been disclaimed, rendering Ford’s ground of invalidity for
`indefiniteness of that claim moot. ........................................................................37
`VI. CONCLUSION ..............................................................................................39
`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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`CBM2016-00101
`Patent No. 7,739,080
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`EXHIBIT LIST
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`2001
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`2002
`2003
`2004
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`2005
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`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.
`2006 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. 7,739,080 to Beck et
`al.
`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)
`“Ford Motor Company’s Motion to Adopt In Part the Report
`and Recommendation of the Special Master Regarding Claim
`Construction.” Ford Motor Company v. Versata Software, Inc.,
`15-10628 (E.D. MI) (2016)
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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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`2012
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`CBM2016-00101
`Patent No. 7,739,080
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`I.
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`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 has failed to demonstrate that claims 2, 10, and 16 are
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`indefinite, and Ford’s ground of unpatentability of claim 22 under 35 U.S.C. § 112,
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`second and sixth paragraphs, is mooted by statutory disclaimer.
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`CBM2016-00101
`Patent No. 7,739,080
`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. 7,739,0801 is eligible for CBM review
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`and has also failed to establish it is more likely than not that at least one of the
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`claims of the ’080 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 ’080
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`patent.
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`II. THE ’080 PATENT TECHNOLOGY
`The ’080 patent generally relates to configuration systems for products. (Ex.
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`2002, Franke Decl., para. 25; Ex. 1001, ’080 Patent, Abstract and 1:14-15.) The
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`configurations are built on configuration models for a product -- where the model
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`is a collection of rules defining buildable configurations of a product. (Franke
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`Decl., para. 25; Ex. 1001, 2:57-58.)
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`For certain products, multiple configurations with individual rules are
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`maintained, such as where a company markets a product with a particular set of
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`standard features in one region, and with a different set of standard features in
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`another region. (Franke Decl., para. 26; Ex. 1001, 3:2-5.) For example, a computer
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`1 U.S. Patent No. 7,739,080 is marked as Ford’s exhibit 1001. Versata will
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`refer to this patent as “the ’080 patent.”
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`Patent No. 7,739,080
`power supply may have a standard 110V input in one country, and a standard 220V
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`input in another country. (Franke Decl., para. 26; Ex. 1001, 3:9-11.)
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`In configuration systems with multiple configuration spaces,
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`these
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`configuration spaces are usually kept separate in order to facilitate maintenance of
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`the products. (Franke Decl., para. 27; Ex. 1001, 3:14-16.) But sometimes, in order
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`to answer a query about a product, it is necessary to have a complete view into all
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`of the allowable features across configuration spaces. (Franke Decl., para. 27; Ex.
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`1001, 3:38-51.) These queries can be answered by stitching together the product
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`models. (Franke Decl., para. 28; Ex. 1001, 3:60-62.)
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`Versata developed the technology of the ’080 patent to address the
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`challenges of stitching product models. In particular, stitching models together
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`may result in unspecified buildable configurations. (Franke Decl., para. 29; Ex.
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`1001, 3:64-4:5.) And a conventional consolidation process would not automatically
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`detect these unspecified configuration buildables and correct them. (Franke Decl.,
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`para. 29; Ex. 1001, 4:5-7.)
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`Before the ’080 patent, resolving inconsistencies in stitched product models
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`required manual
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`identification and
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`resolution of unspecified buildable
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`configurations. (Franke Decl., para. 37; Ex. 1001, 4:55-62.) To solve the challenge
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`of stitched product models resulting in unspecified buildable configurations, the
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`Patent No. 7,739,080
`’080 patent identifies and resolves conflicts in the models by extending and
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`restricting the models to allow consolidation. (Franke Decl., para. 38; Ex. 1001,
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`9:9-24.)
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`Beyond simply stitching models by finding an intersection of families within
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`the model, the ’080 patent approach looks for relationships a directed acyclic graph
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`(DAG) for the model. (Franke Decl., para. 39; Ex. 1001, 9:9-14.) The ’080 patent
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`provides an example of its operation in the context of two models, and adjusting
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`one model in order to permit its combination with the other model. (Franke Decl.,
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`para. 40; Ex. 1001, 9:14-16.) The novel approach by which families within a model
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`are restricted and extended permits consolidation while preserving the relationships
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`in the DAG structure that the data is sourced from. (Franke Decl., para. 42; Ex.
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`1001, 9:19-24.)
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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, p.10.)
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`However, it should be noted for completeness of the record, that a Report
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`and Recommendation of the Special Master Regarding Claim Construction in the
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`concurrent litigation issued on November 7, 2016, and addresses several terms in
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`the ’080 patent. (Ex. 2011, Report and Recommendation of the Special Master
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`Regarding Claim Construction.) The Special Master’s conclusions are highlighted
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`below. However, the constructions from the concurrent litigation do not affect the
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`analysis herein, which is applicable to both these constructions and the plain and
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`ordinary meaning under the broadest reasonable interpretation of the claims.
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`“extending at least one of the ancestor configuration model family
`A.
`spaces”
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`Claims 1-22 recite the term “extending at least one of the ancestor
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`configuration model family spaces.” In concurrent litigation, the Special Master
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`concluded that the step must be substantively performed by a computer or
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`computer system, not by a human. (Id., p. 61.)
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`“removing [the added space] from the child configuration model
`B.
`family space…”
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`Claims 1-22 recite the term “removing [the added space] from the child
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`configuration model family space…” In concurrent litigation, the Special Master
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`concluded that the step must be substantively performed by a computer or
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`computer system, not by a human. (Id., p. 56.)
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`Patent No. 7,739,080
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`“inconsistencies between rules”
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`C.
`Claims 2, 10, and 16 recite the terms “detecting any inconsistencies between
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`rules included in the consolidated model” and “attempting to resolve any detected
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`inconsistencies.” In concurrent litigation, the Special Master concluded that
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`“inconsistencies between rules” means the same thing as “conflicts between rules.”
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`(Ex. 2011, p. 69.) Ford has objected to the Special Master’s conclusion. (see Ex.
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`2012, Ford Motor Company’s Motion to Adopt In Part the Report and
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`Recommendation of the Special Master Regarding Claim Construction.) The
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`dispute is the basis for Ford’s ground of invalidity regarding claims 2, 10, and 16
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`in view of 35 U.S.C. § 112, second paragraph, and is discussed in detail in the
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`related section below.
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`IV. THE ’080 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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`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 ’080 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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`Patent No. 7,739,080
`of the claims of the ’080 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 ’080 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 ’080 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 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.
`Petition, p. 3.
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`Ford concludes its arguments by saying simply that “the configuration
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`process/system claimed in the ’080 patent is at least ‘incidental to’ or
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`‘complementary to’ a financial activity, such as sales of automobiles, computers,
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`financial services, or other products.” (Petition, p. 5.) Ford relies on the WTS
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`Paradigm decision for the proposition that “patents for configuring saleable
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`products relate to ‘a financial product or service.’” (Petition, p. 4.)
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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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`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
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`Patent No. 7,739,080
`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 ’080 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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`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 “[a]ll of the ’080 patent claims are directed to
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`configuring salable products that a customer can purchase.” (Petition, p. 5.) But
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`Ford never identifies specific claim language that is directed to methods and
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`apparatuses of particular types and with particular uses “in the practice,
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`Patent No. 7,739,080
`administration, or management of a financial product or service,” as required by
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`the statute, and fails to show that the claims are directed to CBM review eligible
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`subject matter. This alone is sufficient to find that Ford has failed to demonstrate
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`CBM review eligibility of the ’080 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, slip op. at 12.
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`Rather, the court’s rationale in Unwired Planet mirrors 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
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`a sale has occurred or may occur, or even that the
`specification speculates such a potential sale might occur.
`Unwired Planet, No. 2015-1812, slip op. at 12.
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`Ford’s argument that the ’080 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 claims’ (specifically
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`claims 1, 3, and 4)2 recitation of “a product”:
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`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
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`2 Claim 22 has been disclaimed by the filing of a statutory disclaimer under
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`37 C.F.R. § 1.321(a) on October 28, 2016. A copy of the statutory disclaimer is
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`submitted as an exhibit in accordance with the Board’s instructions. (Ex. 2009,
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`Statutory Disclaimer 7,739,080, filed on October 28, 2016.) Claim 22 therefore
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`cannot serve as the basis of CBM review eligibility. (see 37 C.F.R. § 42.207(e).)
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`configuration models of a product . . . .” (Id. at 19:24-
`26.)
`Petition, p. 5.
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`Ford adds that “[t]he claims state the purpose of the invention is to answer
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`‘configuration questions related to the product.” (Petition, p. 5.) It is worth noting
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`that each of these recitations of “a product” is found in the preamble of the
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`respective claims, or as an intended use of the claimed invention. None of the cited
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`claims 1, 3, and 4 provide any limitations that are specifically directed to the
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`practice, administration, or management of a financial product or service.
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`Accordingly, the claims have application in “‘business environments across
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`sectors’ with ‘no particular relation to the financial services sector,’ which the
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`legislative history indicates is outside the scope of covered business method patent
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`review.” FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P., CBM2015-00053,
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`Paper 9, at 10 (PTAB June 29, 2015) (citing 157 Cong. Rec. S5441 (daily ed. Sept.
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`8, 2011).) The idea that the configuration models and questions relate to a product
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`is never suggested by Ford to be anything more than “incidental to” or
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`“complementary to” a financial activity -- and would at most be incidental or
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`complementary given its relegation to the preamble and an intended use clause.
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`Nor is the “product” of the ’080 patent claims necessarily salable -- the ’080
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`patent explains that the claimed inventions can also be used in other applications,
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`such as manufacturing. (Franke Decl., para. 44; Ex. 1001, 18:3-9.) And whether a
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`product that is the subject of the configuration models is used in manufacturing, or
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`is offered for sale, or anything else, has no bearing on the features of the ’080
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`patent claims. (Franke Decl., para. 44.)
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`Since the specifics of the products and whether they are salable or not is
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`irrelevant and not required by the claims and is only provided in the specification
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`as an example use (Franke Decl., para. 44), there is an insufficient relationship
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`between Ford’s citations to the specification that Ford purports supports CBM
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`review eligibility and the actual claim language recited in claims 1, 3, and 4. See
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`Global Tel*Link Corp. v. Securus Techs., Inc., CBM2015-00145, Paper 49 at 17
`
`(citing Tagged, Inc. v. Gonzalez, CBM2015-00075 , slip op. at 7 (PTAB Aug. 20,
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`2015) (Paper 8)) and Facebook, Inc. et al. v. Skky LLC, CBM2016-00091, Paper 7,
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`at 13-14 (PTAB November 23, 2016) (citing Unwired Planet).)
`
`Claims 1, 3, and 4 are used to consolidate multiple configuration models of a
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`product and to answer configuration questions related to the product (see 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,” the use of the claimed systems
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`and methods of the ’080 patent is agnostic to the product or the specific use of the
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`product. (Franke Decl., para. 44; Ex. 1001, 18:3-9.)3 As such, Ford has completely
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`failed to satisfy its burden of showing how the claims are directed to methods or
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`apparatuses used in the practice, administration, or management of financial
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`products or services as required by Section 18.
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`C. The claims of the ’080 patent recite a technological invention.
`Regardless of the aforementioned deficiencies in Ford’s petition, the ’080
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`patent is furthermore ineligible for CBM review because the ’080 patent claims are
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`directed to a technological invention.
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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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`invention: whether the claimed subject matter as a whole (1) recites a technological
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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
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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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`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
`
`provided by the claimed subject matter of the ’080 patent. And Ford has failed to
`
`support its position that the claimed technological feature is anticipated or obvious.
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`At no point in its discussion of the “technological invention” prong does
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`Ford even cite to, let alone specifically address, the language of any of claims 1-22.
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`This glaring deficiency is evident in Ford’s unsourced and unsupported statements
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`lacking any grounding in claim language, such as “[t]he ’080 patent describes and
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`claims automating what had been done for many years.” (Petition, p. 8, emphasis
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`added).) Ford’s incomplete analysis is fatal to the petition, and insufficient to find
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`the ’080 patent eligible for CBM review.
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`Ford provides no discussion regarding the technical solution
`1.
`to a technical problem of the ’080 patent claims.
`
`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 ’080
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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.4 This abject
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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 the step of “identifying a conflict ….” Rather than
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`simply finding the intersection of the MKT, ENG, and SER families from Models
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`602 and 612, the ’080 patent approach states that because the ENG family is above
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`Model 612’s defining constraint family (SER) in a directed acyclic graph (DAG)
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`for the model (see Ex. 1001, FIG. 3), it is not possible to adjust the ENG family by
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`4 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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`intersecting its space with Model 612’s defining constraint (SER2). (Franke Decl.,
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`para. 39; Ex. 1001, 9:9-14, elements 602 and 612.)
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`Claim 1 further recites the step of “extending at least one of the ancestor
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`configuration model family spaces ….” In this step, the ENG family in Model 612
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`is extended to be compatible with the release of the ENG family in Model 602.
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`(Franke Decl., para. 40; Ex. 1001,9:14-16, elements 602 and 612.) This extension
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`is compensated for by restricting the SER family so that it is no longer released in
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`the space we extend the ENG family (MKT1.ENG2.*), which corresponds to the
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`“removing from the child configuration model family space …” feature of claim 1.
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`(Franke Decl., para. 41; Ex. 1001, 9:-16-19.)
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`The result is that the restriction on the SER family interacts with the
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`extension of the ENG family in such a way that the consolidated model 822 does
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`not include unspecified buildable configurations, which corresponds to the
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`“combining the first and second configuration models …” feature of claim 1.
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`(Franke Decl., para. 42; Ex. 1001, 9:19-24, element 822.)
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`The consolidation approach recited in claim 1, as well as the remaining
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`claims of the ’080 patent, therefore provides a technical solution (extending and
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`restricting models being consolidated to avoid conflicts) to a technical problem
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`(consolidating configuration models without impacting the model relationships).
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`(Franke Decl., para. 38.)
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`Ford fails to provide any supported reason for concluding
`2.
`that the technological feature of the ’080 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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`evident in each step of the claim. Similar recitations of novel technological features
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`are found in the other claims of the ’080 patent.
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`Ford argues that “[t]he ’080 patent describes and claims automating what
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`had been done for many years, i.e., consolidating product configuration models to
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`define a buildable product.” (Petition, p. 8.) Ford adds that “[t]he patent admits that
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`it was old to consolidate multiple configuration models,” and that the claimed
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`invention differs “merely because ‘[c]onventional consolidation processes do not
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`automatically detect unspecified configuration buildables and correct them.”
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`(Petition, p. 8.)5
`
`
`5 Ford’s position on this issue is entirely unsupported by expert testimony.
`
`While 37 C.F.R. § 42.208(c) notes that “a genuine issue of material fact created by
`
`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,”
`
`there are no issues of material fact on this point -- Ford has failed to provide any
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`Ford’s characterization of the ’080 patent’s ability to automatically detect
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`and correct unspecified configuration buildables as the mere automation of an old
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`process (Petition, p. 8), however, is entirely unsubstantiated. The claimed approach
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`of the ’080 patent differs from the conventional approach to model consolidation,
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`described above, by its technical approach to identifying conflicts in the models
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`and resolving the conflict by extending and restricting the models to allow
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`consolidation. (Franke Decl., para. 38.) The specifics of the technical approach are
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`recited in detail in the steps of claim 1. (Id.)
`
`A human would need to identify and resolve conflicts manually in the
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`conventional consolidation approach. However, the claims of the ’080 patent do
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`not simply automate this manual conflict identification and resolution process.
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`And Ford makes no attempt to discuss the state of the art regarding conflict
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`identification and resolution processes. Ford has failed to present even a basic
`
`discussion of how the manual conflict identification and resolution approach
`
`compares to the automated conflict identification and resolution approach of the
`
`
`factual support for its assertions, while Versata has included the detailed testimony
`
`of Dr. Franke on this point. Accordingly, the Board should accord full weight to
`
`Dr. Franke’s testimony.
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`’080 patent’s claims in order to render the technological features of claim 1 as
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`anticipated or obvious.
`
`The conflict identification and resolution process of the ’080 patent claims is
`
`not the automation of the manual conflict identification and resolution process of
`
`the conventional approach, but rather an entirely novel approach designed
`
`specifically to work within computational limitations (e.g., preserving the DAG)
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`that would not be present in a pen-and-paper approach. (Franke Decl., para. 45.)
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`Specifically, as recited in claim 1, the configuration models “are organized
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`in accordance with respective directed acyclic graphs.” The approach of the ’080
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`patent claims must