UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 5,825,651 to Gupta et al.
`
`Case No.: IPR2017-00146
`______________
`
`
`
`DECLARATION OF DR. PHILIP GREENSPUN IN SUPPORT OF INTER
`PARTES REVIEW UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100
`ET SEQ. (CLAIMS 1-14 AND 60-72 OF U.S. PATENT NO. 5,825,651)
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`TABLE OF CONTENTS
`
`List of Exhibits ........................................................................................................... 3
`
`I.
`
`II.
`
`Qualifications and Professional Experience .................................................... 8
`
`Relevant Legal Standards ..............................................................................14
`
`III. Qualifications of One of Ordinary Skill in the Art ........................................15
`
`IV. Overview of the ‘651 Patent ..........................................................................15
`
`V.
`
`Challenged Claims of the ‘651 Patent and Claim Construction ....................22
`
`VI. Overview of the Prior Art ..............................................................................25
`
`A. Axling’s OBELICS Software – Axling 1994 & Axling 1996 ............27
`B.
`Fohn’s PC/CON Software - 1995........................................................38
`C.
`Skovgaard’s salesPLUS Software - 1995 ...........................................44
`
`VII. Grounds for Challenge ...................................................................................46
`
`B.
`
`A. Ground 1 – Claims 1-4, 6-10, 12-13, 60-62, 64-68, and 70-71
`are Obvious in View of the Axling Papers, Fohn and the
`General Knowledge of a Person of Ordinary Skill in the Art .............46
`1.
`A Person Skilled In The Art At The Time Of The
`Alleged Invention Would Have Combined the Teachings
`of the Axling Papers and Fohn .................................................46
`Ground 2 – Dependent Claims 5, 11, 63 and 69 are Obvious in
`View of the Axling Papers, Fohn, Skovgaard 1995, Baker and
`the General Knowledge of a Person of Ordinary Skill in the Art .....137
`1.
`A Person Skilled In The Art At The Time Of The
`Alleged Invention Would Have Combined the Teachings
`of the Axling Papers, Fohn, Skovgaard 1995, and Baker .......137
`Ground 3 – Dependent Claims 14 and 72 are Obvious in View
`of the Axling Papers, Fohn, Skovgaard 1995 and the General
`Knowledge of a Person of Ordinary Skill in the Art .........................154
`1.
`A Person Skilled In The Art At The Time Of The
`Alleged Invention Would Have Combined the Teachings
`of the Axling Papers, Fohn, and Skovgaard 1995 ..................154
`
`C.
`
`VIII. Conclusion ...................................................................................................158
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`
`
`List of Exhibits
`
`Description
`
`Date
`
`n/a
`
`Oct. 7, 2016
`
`Sept. 1995
`
`Exhibit
`No.
`Oct. 20, 1998
`1101 U.S. Patent No. 5,825,651
`1102 Declaration of Dr. Philip Greenspun n/a
`Curriculum Vitae of Dr. Philip
`Greenspun
`Declaration of Tomas Axling and
`Exhibits A-E attached thereto
`S.M. Fohn, J.S. Liau, A.R. Greef,
`R.E. Young, P.J. O'Grady,
`Configuring Computer Systems
`Through Constraint-Based
`Modeling and Interactive Constraint
`Satisfaction, Computers in Industry,
`Volume 27, Issue 1, Pages 3-21
`W.P. Birmingham, D.P. Siewiorek,
`MICON: A Knowledge Based
`Single Board Computer Designer,
`Proceedings of 21st Design
`Automation Conference, IEEE CS
`Press, Pages 565-571
`M. Stefik, Introduction to
`Knowledge Systems, Chapter 1,
`“Symbol Systems,” Morgan
`Kaufmann Publishers, Inc., San
`Francisco, CA (June 15, 1995)
`U.S. Patent No. 5,283,857 titled
`Expert System Including
`Arrangement for Acquiring
`Redesign Knowledge issued to
`Evangelos
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`Identifier
`
`’651 Patent
`Greenspun
`
`Greenspun CV
`
`Axling
`Declaration
`
`Fohn
`
`Birmingham
`
`Stefik – Ch. 1
`
`Evangelos
`
`1984
`
`June 1995
`
`Feb. 1, 1994
`
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`Exhibit
`No.
`
`Description
`
`Date
`
`Identifier
`
`H.J. Skovgaard, salesPLUS A
`Product Configuration Tool, 13th
`National Conference on Artificial
`Intelligence (AAAI-96), Workshop
`on Configuration, No AAAI FS-96-
`03, Portland, Oregon, 61-68, August
`4-8, 1996
`H.J. Skovgaard, A New Approach
`to Product Configuration, Third
`International Conference icle, ’95,
`Concurrent Engineering &Technical
`Information Processing, January 30
`– February 3, 1995, 197-204
`
`Patent Owner’s Claim Construction
`Brief in Trilogy Software, Inc. et al.
`v. Selectica, Inc., Case No. 2:04-cv-
`160, Dkt. #58 (E.D. Tex.)
`
`S.C. Dewhurst, K.T. Stark,
`Programming in C++, Prentice Hall
`Software Series
`U.S. Patent No. 5,825,651 File
`History
`Texas Instruments C++ Object-
`Oriented Library User’s Manual,
`1991
`H.G. Baker, Efficient
`Implementation of Bit-Vector
`Operation in Common Lisp, ACM
`SIGPLAN Lisp Pointers 3, No. 2-4
`1990
`B. Yu, H.J. Skovgaard, A
`Configuration Tool to Increase
`Product Competitiveness, 1998
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`1114
`
`1115
`
`1116
`
`1996
`
`Skovgaard 1996
`
`1995
`
`Skovgaard 1995
`
`July 1, 2005
`
`Patent Owner’s
`Claim
`Construction
`Brief in Selectica
`Litigation
`
`1989
`
`Dewhurst
`
`n/a
`
`1991
`
`’651 Patent File
`History
`
`Texas
`Instruments
`
`1990
`
`Baker
`
`1998
`
`Skovgaard 1998
`
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`Exhibit
`No.
`
`Description
`
`Date
`
`Identifier
`
`M. Stefik, Introduction to
`Knowledge Systems, Chapter 8,
`“Configuration,” Morgan Kaufmann
`Publishers, Inc., San Francisco, CA
`(June 15, 1995)
`M.R. Wagner, Understanding the
`ICAD System, ICAD, Inc., 1990
`Claim Construction Order in
`Trilogy Software, Inc. v. Selectica,
`Inc., Case No. 2:04-cv-160, 405
`F.Supp.2d 731 (E.D.Tex. 12/20/05)
`J.R. Wright, E.S. Weixelbaum, G.T.
`Vesonder, K.E. Brown, S.R.
`Palmer, J.I. Berman, and H.H.
`Moore, A Knowledge-Based
`Configurator That Supports Sales,
`Engineering, and Manufacturing at
`AT&T Network Systems, AI
`Magazine, Volume 14, Number 3
`(Fall 1993)
`1976 Chevrolet Corvette Brochure
`Declaration of Brian Christopher
`Gray
`
`June 1995
`
`Stefik – Ch. 8
`
`1990
`
`ICAD
`
`Dec. 20, 2005 CC Order
`
`1993
`
`Wright
`
`Sept. 1975
`
`1976 Brochure
`
`Oct. 17, 2016 Gray Declaration
`
`Declaration of Leon Sterling
`
`Oct. 18, 2016
`
`Sterling
`Declaration
`
`T. Axling, S. Haridi, A Tool For
`Developing Interactive
`Configuration Applications,
`Proceedings of the Second
`International Conference on the
`Practical Application of Prolog, 27-
`45 (1994)
`T. Axling, S. Haridi, A Tool For
`Developing Interactive
`Configuration Applications, The
`Journal of Logic Programming,
`Volume 26, No. 2, 147-168 (1996)
`
`Apr. 1994
`
`Axling 1994
`
`Feb. 1996
`
`Axling 1996
`
`1117
`
`1118
`
`1119
`
`1120
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
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`Description
`
`Date
`
`Identifier
`
`Declaration of Tiye Greene
`regarding Fohn
`
`Oct. 26, 2016
`
`n/a
`
`Declaration of Dominique Kempf
`
`Oct. 26, 2016
`
`Kempf
`Declaration
`
`Declaration of Tiye Greene
`regarding Baker
`Ford’s First Amended Complaint in
`the Eastern District of Michigan
`Versata’s Answer & Counterclaims
`in the Eastern District of Michigan
`Eastern District of Michigan Order
`Denying Versata’s Motion to
`Dismiss
`Eastern District of Texas Order to
`File Notice
`Versata’s Notice Regarding
`Dismissal Without Prejudice in the
`Eastern District of Texas
`Order of Dismissal Without
`Prejudice in the Eastern District of
`Texas
`Excerpts from Versata’s
`Presentation regarding Claim
`Construction
`P. Deransart, A Ed-Dbali, L.
`Cervoni, Prolog: The Standard –
`Reference Manual, Springer-Verlag
`(1996)
`
`Oct. 27, 2016
`
`n/a
`
`Mar. 16, 2015 n/a
`
`Oct. 28, 2015
`
`n/a
`
`Oct. 14, 2015
`
`n/a
`
`Nov. 5, 2015
`
`n/a
`
`Nov. 30, 2015 n/a
`
`Dec. 3, 2015
`
`n/a
`
`Sept. 13, 2016 n/a
`
`1996
`
`Prolog Reference
`Manual
`
`Exhibit
`No.
`
`1126
`
`1127
`
`1128
`
`1129
`
`1130
`
`1131
`
`1132
`
`1133
`
`1134
`
`1135
`
`1136
`
`
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`I, Philip Greenspun, hereby declare as follows:
`
`1.
`
`I am making this declaration at the request of Ford Motor Company in
`
`the matter of Inter Partes Review of U.S. Patent No. 5,825,651 (“the ’651 Patent”)
`
`to Gupta et al.
`
`2.
`
`I am a salaried non-owner employee of Fifth Chance Media LLC,
`
`which is being compensated for my work in this matter at a rate of $475/hour. My
`
`compensation in no way depends on the outcome of this proceeding.
`
`3.
`
`In preparation of this declaration, I have studied the exhibits as listed
`
`in the Exhibit List shown above. Each of these exhibits is a true and accurate copy.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`
`
`(a) The documents listed above as well as additional patents and
`
`documents referenced herein;
`
`
`
`(b) The relevant legal standards, including the standard for
`
`obviousness provided in KSR International Co. v. Teleflex, Inc., 550 U.S.
`
`398 (2007), and any additional legal standards set forth in the body of this
`
`declaration; and
`
`
`
`(c) My knowledge and experience based upon my work and study
`
`in this area as described below.
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`I.
`
`Qualifications and Professional Experience
`
`5.
`
`I have provided my full background in the curriculum vitae that is
`
`attached as Exhibit 1103.
`
`6.
`
`I earned a Ph.D. in Electrical Engineering and Computer Science from
`
`Massachusetts Institute of Technology in 1999. I also obtained a Bachelor of
`
`Science Degree in Mathematics from Massachusetts Institute of Technology in
`
`1982 and a Master of Science Degree in Electrical Engineering and Computer
`
`Science from Massachusetts Institute of Technology in 1993.
`
`7. My Ph.D. dissertation concerned the engineering of large online
`
`Internet communities with a Web browser front-end and a relational database
`
`management system (RDBMS) containing site content and user data.
`
`8.
`
`I have authored five computer science textbooks in total, including
`
`Database Backed Websites (Macmillan), Software Engineering for Internet
`
`Applications, and an SQL language tutorial.
`
`9.
`
`I have served as an independent member of various advisory and
`
`corporate boards, mostly for technology companies. For example, I joined the
`
`corporate board of an MIT materials science spin-off in late 2005 during a
`
`$550,000 seed capital phase. I stepped down when the company secured $10
`
`million in venture capital in mid-2007.
`
`10.
`
`I began working full-time as a computer programmer in 1978,
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`developing a database management system for the Pioneer Venus Orbiter at the
`
`National Aeronautics and Space Administration’s Goddard Space Flight Center.
`
`11.
`
`In the early 1980s I developed computer-aided design software for
`
`electronic systems, specifically to assist digital hardware engineers designing
`
`processors at Hewlett-Packard and Symbolics.
`
`12.
`
`I co-developed a computer program for computer-aided design of
`
`mechanical systems in the mid-1980s. This was called the ICAD” System. The
`
`ICAD System enabled engineers to decompose a mechanical design into a
`
`hierarchy of subassemblies and establish configuration rules at each level of
`
`subassembly. The end-result was a system in which it was possible to go from
`
`customer specifications to a finished design without human intervention. The first
`
`applications for the ICAD System involved large structures built from steel, such
`
`as house-sized air-cooled heat-exchangers used in commercial buildings and
`
`industrial plants.
`
`13.
`
`ICAD went public as “Concentra” in the 1990s and was acquired by
`
`Oracle Corporation in 2002. The product’s mechanical design capabilities were
`
`deemphasized and its configuration capabilities were improved for use as a
`
`general-purpose sales configuration system. The product survives today as Oracle
`
`Configurator, part of the Oracle Applications suite of business software.
`
`“Understanding the ICAD System” is a 1990 marketing brochure that contains an
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`explanation of some of the basic capabilities. Excerpts from this brochure are
`
`reproduced below:
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`Ex. 1118 [ICAD] at 4-29 – 4-31, pages 80-82
`
`
`
`14.
`
`I developed my first program using a relational database management
`
`system in 1994. It was a Web interface to the Children’s Hospital Oracle RDBMS,
`
`Version 6. This application enabled doctors at the hospital to view patient clinical
`
`data using any computer equipped with a Web browser.
`
`15.
`
`In 1995, I led an effort by Hearst Corporation to set up an
`
`infrastructure for Internet applications across all of their newspaper, magazine,
`
`radio, and television properties. This infrastructure included software for
`
`managing users, shopping carts, electronic commerce, advertising, and user
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`tracking.
`
`16. Between 1995 and 1997, I significantly expanded the photo.net online
`
`community that I had started in 1993 to help people teach each other to become
`
`better photographers. I began distributing the source code behind photo.net to
`
`other programmers as a free open-source toolkit, called “ArsDigita Community
`
`System.” One version of this system was an add-on to AOLserver, a Web server
`
`with an API.
`
`17.
`
`In May 1997, Macmillan published my first textbook on Internet
`
`Application development, Database Backed Websites. A September 1998 update
`
`to this book was published as Philip and Alex’s Guide to Web Publishing
`
`(hardcopy version published in April 1999).
`
`18.
`
`In 1997, I started a company, ArsDigita, to provide support and
`
`service for the ArsDigita Community System. Between 1997 and the middle of
`
`2000, I managed the growth of ArsDigita to 80 people, almost all programmers,
`
`and $20 million per year in annual revenue. This involved supervising dozens of
`
`software development projects, nearly all of which were Internet Applications with
`
`a Web front-end and an Oracle RDBMS back-end.
`
`19.
`
`In 1999, I supervised the packaging up of much of our ecommerce-
`
`related code into the “ecommerce” module of the ArsDigita Community System.
`
`As the founder, CEO, and chief technical employee of the company, I personally
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`developed functional specifications, SQL data models (Structured Query
`
`Language, or “SQL,” the standard programming language for relational database
`
`management systems), and Web page flows that determined the user experience.
`
`20. Between 2000 and the present, I have managed software development
`
`projects for philip.greenspun.com and photo.net. Both online services are
`
`implemented as relational database management applications. In addition, I have
`
`developed a Facebook application, postclipper.com, that allows parents to create
`
`electronic baby books.
`
`21. Separately from this commercial and public work, I have been
`
`involved as a part-time teacher within the MIT Department of Electrical
`
`Engineering and Computer Science, educating students in how to develop Internet
`
`Applications with an RDBMS back-end. In the spring of 1999, I taught 6.916,
`
`Software Engineering of Innovative Web Services, with Professors Hal Abelson
`
`and Michael Dertouzos. In the spring of 2002, this course was adopted into the
`
`standard MIT curriculum as 6.171. I wrote 15 chapters of a new textbook for this
`
`class, Software Engineering for Internet Applications. This book was published on
`
`the Web at http://philip.greenspun.com/seia/ starting in 2002 and 2003 and also in
`
`hardcopy from MIT Press in 2006. I am the sole author of a supplementary
`
`textbook for the class, SQL for Web Nerds, a succinct SQL programming language
`
`tutorial available only on the Web at http://philip.greenspun.com/sql/. I use this
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`book when I teach an intensive course in database programming at MIT, as I did
`
`most recently in January 2015.
`
`II. Relevant Legal Standards
`
`22.
`
`I have been asked to provide opinions regarding the validity of claims
`
`of the ’651 Patent in light of several prior art publications.
`
`23.
`
`It is my understanding that a claimed invention is unpatentable under
`
`35 USC § 102 if a prior art reference teaches every element of the claim. This is
`
`sometimes referred to as “anticipation.”
`
`24.
`
`It is my understanding that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the alleged
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. This is sometimes described as “obviousness.” I understand that
`
`an obviousness analysis takes into account the level of ordinary skill in the art, the
`
`scope and content of the prior art, and the differences between the prior art and the
`
`claimed subject matter.
`
`25.
`
`It is my understanding that the Supreme Court, in KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398 (2007) and other cases, has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of the claimed subject matter. Some of these rationales include the following:
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`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to obtain predictable
`
`results; a predictable use of prior art elements according to their established
`
`functions; applying a known technique to a known device to yield predictable
`
`results; choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and some teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`III. Qualifications of One of Ordinary Skill in the Art
`
`26.
`
`I have reviewed the ’651 Patent, as well as the pertinent prior art
`
`documents discussed below. Based on this review and my knowledge of the
`
`configuration system field, including my work on ICAD system in the 1980’s, it is
`
`my opinion that a person having ordinary skill in the art would have either: (1) a
`
`bachelor’s degree
`
`in computer science, electrical engineering, computer
`
`engineering, or similar technical field; or (2) equivalent experience in the design or
`
`implementation of configuration systems. The relevant field of art is product
`
`configuration software.
`
`IV. Overview of the ‘651 Patent
`
`27. The ‘651 Patent is directed to a system capable of supporting the
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`following operations: (1) “define” a product based on its constituent parts and part
`
`relationships, and (2) “configure” a valid product using the product definition. The
`
`patent suggests that “a graphical user interface (GUI) is preferably used” but that
`
`“any method” including a “text editor” could also be used for defining (“creating
`
`and maintaining”) a product model. (Ex. 1101 at 7:58-63.) The claims of the ‘651
`
`Patent are broad enough to cover both text-based and GUI-based entry of product
`
`models or system definitions.
`
`28. The Background of the Invention section of the ’651 Patent describes
`
`certain prior art approaches to defining and configuring products. (Ex. 1101 at
`
`1:12-60.)
`
`29. The Background explains that salespeople, such as an “automobile
`
`salesperson,” traditionally define, configure, and validate vehicle configurations
`
`before they are sold to a customer:
`
`A system is comprised of components. Before a system can be built
`
`the components of the system must be identified. To configure a
`
`system, a user must select the parts to include in the system.
`
`Typically, one who is knowledgeable about a system and its
`
`components defines the system. Thus, for example, an automobile
`
`salesperson assists an automobile buyer in determining the type and
`
`features of the automobile. The salesperson understands the features
`
`and options that are available to create a valid configuration. Some
`
`features and options cannot be combined. The selection of some
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`features caused other features to be unavailable, etc. It would
`
`otherwise be difficult for the buyer to identify all of the features and
`
`options available on the automobile that can be combined to create a
`
`valid configuration.
`
`(Ex. 1101 at 12-25.)
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`30. The Background also states that prior art “computer systems” were
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`available for defining and configuring systems. (Ex. 1101 at 1:26-27.) The ‘651
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`Patent identifies two drawbacks associated with the prior art computer systems.
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`(Ex. 1101 at 1:27-60.) First, the prior art systems required “a configuration
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`language to define a system” which “limits the number of users who are able to use
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`the configuration system.” (Id.) The patent states that “the level of sophistication
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`needed to communicate with the configuration system (through a configuration
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`language) results in less sophisticated users being unable to use the system.” (Id.)
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`31. The ‘651 Patent is correct that the pioneering work (discussed below)
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`in computer-assisted configuration, e.g., from the late 1970s through the mid-
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`1980s, relied on text-based configuration languages. As explained below, however,
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`prior art configuration software products such as OBELICS, PC/CON and
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`salesPLUS permitted the definition and configuration of a product using a
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`graphical user interface, as opposed to a “configuration language.” These
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`interfaces were provided in the prior art software for the very purpose of
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`simplifying the user’s experience defining and configuring products. These prior
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`art systems were known within the product configuration software industry, and
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`were published in the literature, but they were not described in the Background of
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`the Invention or considered during examination of the ‘651 Patent.
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`32. The ‘651 Patent also states that the prior art computer systems
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`suffered from the drawback of “impos[ing] a flow or ordering to the user
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`operations” that might lead to frustration by a “novice user.” (Ex. 1101 at 1:38-
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`48.) The patent explains that this limitation of the prior art systems may cause a
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`“novice user” to “become frustrated or confused and abort the configuration
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`process.” (Id.)
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`33. As explained below, however, prior art configuration software
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`products such as PC/CON and salesPLUS were available that, by design, did not
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`impose a particular flow on the manner in which a product is configured. In fact,
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`as explained below, prior art systems were generally rule-based (also sometimes
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`referred to as “constraint-based”) in which a computer program would review a
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`basket of rules (or “constraints”) without specific directions as to what order in
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`which to conduct the review. This is as distinct from traditional “imperative”
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`computer programming, such as a high school student might learn in an
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`introductory Basic, C, Pascal, or Java class, in which the computer is instructed to
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`do Step 1, then Step 2, then Step 3. Fohn, discussed in detail below, provides a
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`good example of how persons of ordinary skill used the terms “constraint,” “rule,”
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`and “relation” in 1995, defining a “constraint” as “any interrelationship among
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`elements of a model; for example, a constraint can be a rule, equation, relation,
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`rows in a database table or any data structure.” (Ex. 1105, Fohn at 8.) Fohn
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`explains that rules or constraints in the basket might be evaluated in any order:
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`“Saturn also allows users the flexibility to start anywhere in the problem space.
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`This means that a user can start by assigning values to any of the decision variables
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`at any time.” (Ex. 1105, Fohn at 13) Note that “Saturn” refers to a standard
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`“constraint-system shell,” which Fohn describes on pages 8-11. These prior art
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`systems were not considered during examination of the ‘651 Patent.
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`34.
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`In the Summary of the Invention, the ‘651 Patent describes a two-part
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`system having a “maintenance system” for “defining” a product, and a
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`“configuration system” that is used to configure a product “using a definition
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`created by the maintenance system.” (Ex. 1101 at 2:38-60.) These two systems
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`are shown in Figure 2. As explained below, each of the prior art products
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`(OBELICS, PC/CON, and salesPLUS) included what the ‘651 Patent describes as
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`a maintenance system and a configuration system.
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`35. The “maintenance system” described in the ‘651 Patent includes a
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`graphical user interface to define a product, including relationships between
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`products and parts, and relationships between the parts themselves. (Ex. 1101 at
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`2:38-49.)
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` The ’651 Patent uses
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`the
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`terms “parts” and “components”
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`interchangeably. (Ex. 1101, e.g., 2:4-6, 6:8-9, 7:52.) Therefore, in the context of
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`the ‘651 Patent, my analysis treats these terms as synonymous with one another.
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`Figure 6 shows an example graphical user interface for defining a product. (Ex.
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`1101 at 3:65-67, 8:64-67.)
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`Ex. 1101, Fig. 6
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`
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`36.
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`In this example, the product is defined by dragging-and-dropping
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`parts from pane 602 into panes 604-614 to create relationships (e.g., “includes,”
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`“excludes,” “requires choice”) between a product and parts in section 650, and
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`between parts themselves in section 652. (Ex. 1101 at 8:5-11.) An example
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`relationship is as follows: “Part A includes Part B and Part C.” In this example,
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`“Part A” is the left-hand side of the relationship, and “Part B and Part C” is the
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`right-hand side of the relationship. The relationship itself is an “includes”
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`relationship.
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`37. The ‘651 Patent describes the product definition created with the GUI
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`of Figure 6 as an “external representation” that is translated by a “compiler” into
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`an “internal representation.” (Ex. 1101 at 3:1-9, 9:10-16.) The
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`internal
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`representation is used by the computer during a configuration session to validate a
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`user’s input against the product definition. (Ex. 1101 at 3:9-11, 9:30-32.) As
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`explained below, the prior art salesPLUS product used a “compiler” for the very
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`same purpose.
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`38. Figure 8B of the ’651 Patent provides an example of an internal
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`representation of relationships between products and parts defined using the GUI
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`shown in Figure 6. In the preferred embodiment, the internal representation
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`includes a table having a “left hand side” and a “right hand side.” (Ex. 1101 at
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`11:1-10.) Separate tables may represent each relationship type, e.g., “includes,”
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`“excludes,” “removes,” “requires choice,” etc. (Ex. 1101 at 11:10-41.) The tables
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`may contain bit vectors representing products and parts on the left hand side and
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`right hand side of the relationships corresponding to the different tables. Id.
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`39. The ‘651 Patent describes some mechanisms for representing rules
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`regarding more than one part at a time. For example, in column 6, the preferred
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`embodiment has a mechanism for grouping parts and “when a group of parts is
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`assigned a behavior, all the members inherit that behavior automatically.” (Ex.
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`1101 at 6:7-20.) Analogously, in column 7, the specification describes that “if
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`some part-to-part relationships are to be enforced on all products within a product
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`line, then the relations are created once and are enforced for all products. These
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`relationships are referred to as global relationships.” (Ex. 1101 at 7:19-24.)
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`40. The “configuration system” described in the ’651 Patent is “used to
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`configure a system using a definition created by the maintenance system”
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`described above. (Ex. 1101 at 2:50-51, 7:66-8:1, 11:65-12:11.) The configuration
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`system validates user input against the product definition, and permits the user to
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`“select and unselect parts in any order.” (Ex. 1101 at 2:53-54.) Although Figure 6
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`is introduced as a GUI for defining a product as part of the maintenance system,
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`the ‘651 Patent explains that a “configuration user” would also use a GUI similar
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`to of Figure 6 to configure a product (based on the internal representation) after it
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`has been defined. (Ex. 1101 at 8:64-65.)
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`V. Challenged Claims of the ‘651 Patent and Claim Construction
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`41.
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`I have been asked to review claims 1-14 and 60-72 of the ’651 Patent.
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`42.
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`I understand that the ‘651 Patent expired on September 3, 2016. For in
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`an inter partes review at the Patent Office, it is my understanding that claims of an
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`expired patent are to be construed in light of the specification as would be read by
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`a person of ordinary skill in the relevant art.
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`43.
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`I understand that the parties’ have agreed with the construction
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`provided by the Eastern District of Texas for certain terms.1 It is my understanding
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`that the following constructions provided by the Eastern District of Texas are to be
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`applied:
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` product relationship – “An association between a product and
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`one or more parts, the association having a left-hand side and a
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`right-hand side. The product represents the left-hand side of the
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`relationship, and the set of elements represents the right-hand
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`side of the relationship.”
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` part relationship – “An association that exists between a first
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`set of parts and a second set of parts, the association having a
`
`left-hand side and a right-hand side. The first set of parts
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`represents the left-hand side of the relationship and the second
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`set of parts represents the right-hand side of the relationship.”
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` configuration state – “The status of the elements in the current
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`configuration.”
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` notActivateable – “A relationship in which the selection of
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`certain left-hand side items results in an invalid configuration
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`state.”
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` active relationship – “A relationship in which all elements on
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`the left-hand side of the relationship are selected.”
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`1 Ex. 1119 [CC Order] is a true and accurate copy of: Trilogy Software, Inc. v.
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`Selectica, Inc., Case No. 2:04-cv-160, Claim Construction Order (E.D.Tex.
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`12/20/05.)
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` includes relationship – “a relationship that causes the elements
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`on the right-hand side of the relationship to be included in the
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`configuration when all elements of the left-hand side of the
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`relationship are already included”
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` excludes relationship – “a relationship that causes the elements
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`of the right-hand side of the relationship to be excluded when
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`all elements of the left-hand side are already included”
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` removes relationship – a relationship that causes the elements
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`of the right-hand side of the relationship to be removed when
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`all elements of the left-hand side