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. 7,882,057 to Little et al.
`
`Case No.: IPR2017-00150
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 17, 30, AND 44-46 OF U.S. PATENT NO. 7,882,057)
`
`
`
`
`

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`Patent No. 7,882,057
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`
`
` Case No: IPR2017-00150
`Attorney Docket No. FPGP0129IPR4
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`
`
`Table of Contents
`
`List of Exhibits .......................................................................................................... ii
`
`Mandatory Notices Under 37 C.F.R. §42.8 ............................................................... v
`
`Real Party-In-Interest – 37 C.F.R. §42.8(b)(1) ............................................... v
`Related Matters 37 C.F.R. §42.8(b)(2) ............................................................ v
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ............................ vi
`Service Information Under 37 C.F.R. §42.8(b)(4) ........................................ vi
`
`I.
`
`Standing Requirements under 37 C.F.R. §42.104 ........................................... 1
`
`A. Grounds for Standing – 37 C.F.R. §42.104(a) ...................................... 1
`1.
`The Petition is timely under 35 U.S.C. §315(a) and (b) ............. 1
`2.
`This Petition should not be denied under §325(d) if
`IPR2016-01013 is not considered on the merits ......................... 4
`Challenged Claims – 37 C.F.R. §42.104(b)(1) ..................................... 7
`Grounds of Challenge – 37 C.F.R. §42.104(b)(2) ................................ 7
`
`B.
`C.
`
`II.
`
`Introduction ...................................................................................................... 9
`
`III. Overview of the ’057 Patent ............................................................................ 9
`
`IV. Person having ordinary skill in the art (PHOSITA) ......................................10
`
`V.
`
`Claim Construction – 37 C.F.R. §42.104(b)(3) .............................................11
`
`VI. Unpatentability Grounds ................................................................................11
`
`A. Ground 1 - Claims 17, 30, and 44-46 are obvious in view of
`Loomans, Stahl, and the general knowledge of a PHOSITA .............12
`1.
`Reasons to combine Loomans with Stahl .................................12
`2.
`Claims 17, 30, and 44 ...............................................................17
`3.
`Claim 45 ....................................................................................45
`4.
`Claim 46 ....................................................................................70
`
`VII. Conclusion .....................................................................................................72
`
`VIII. Fee Statement .................................................................................................72
`
`Certificate of Service ...............................................................................................74
`
`Certificate of Compliance Pursuant to 37 C.F.R. §42.24 ........................................76
`
`
`
`
`
`i
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`Patent No. 7,882,057
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`Attorney Docket No. FPGP0129IPR4
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`
`
`List of Exhibits
`
`Exhibit
`Description
`No.
`1301 U.S. Patent No. 7,882,057
`1302
`Expert Declaration of Dr. Philip
`Greenspun
`1303 Curriculum Vitae of Dr. Philip
`Greenspun
`1304 U.S. Patent No. 7,882,057 File History n/a
`
`Date
`Feb. 1, 2011
`n/a
`
`n/a
`
`Identifier
`‘057 Patent
`Greenspun
`Decl.
`Greenspun CV
`
`‘057 Patent File
`History
`Jan. 18, 2011 Loomans
`
`Jun. 2000
`
`Stahl
`
`1992
`
`Kott
`
`2003
`
`Anselma
`
`1305 U.S. Patent No. 7,873,503 to Loomans
`et al.
`1306 A. Stahl, R. Bergmann, S. Schmitt, A
`Customization Approach for
`Structured Products in Electronic
`Shops, Electronic Commerce: The
`End of the Beginning, 13th
`International Bled Electronic
`Commerce Conference (June 19-21,
`2000)
`1307 Alexander Kott, Gerald Agin, David
`Fawcett, Configuration Tree Solver: A
`Technology for Automated Design
`and Configuration, ASME Journal of
`Mechanical Design 114(1): 187-195
`(1992)
`L. Anselma, D. Magro, and P.
`Torasso, Automatically Decomposing
`Configuration Problems, AI*IA 2003:
`Advances in Artificial Intelligence,
`Lecture Notes in Computer Science,
`Volume 2829, pp. 39-52 (2003)
`
`1308
`
`ii
`
`

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`Patent No. 7,882,057
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` Case No: IPR2017-00150
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`Date
`2002
`
`Identifier
`Magro
`
`1984
`
`Bachant
`
`1982
`
`McDermott
`
`1991
`
`Kramer
`
`1998
`
`Yu
`
`Oct. 2, 2003 Rising
`
`1990
`
`ICAD
`
`April 2002
`
`Oracle
`
`1999
`
`CBR Works
`Paper
`
`1310
`
`1311
`
`Exhibit
`Description
`No.
`1309 D. Magro and P. Torasso,
`Decomposing and Distributing
`Configuration Problems, Artificial
`Intelligence: Methodology, Systems,
`and Applications, Lecture Notes in
`Computer Science, Volume 2443, pp.
`81-90 (2002)
`Judith Bachant, John McDermott, R1
`Revisited: Four Years in the Trenches,
`AI Magazine Volume 5, Number 3
`(1984)
`John McDermott, R1: A Rule-Based
`Configurer of Computer Systems,
`Artificial Intelligence (1982)
`1312 Bryan M. Kramer, Knowledge-Based
`Configuration of Computer Systems
`Using Hierarchial Partial Choice,
`IEEE (1991)
`1313 Bei Yu and Hans Jorgen Skovgaard, A
`Configuration Tool to Increase
`Product Competitiveness, IEEE
`Intelligent Systems, 34-41
`(July/August 1998)
`1314 U.S. Patent Application Publication
`No. 2003/0187950 to Rising
`1315 Martin R. Wagner, Understanding the
`ICAD System, ICAD, Inc., 1990
`1316 Oracle Configurator Developer, User’s
`Guide, Release 11i for Windows
`95/98/2000 and Windows NT 4.0
`Stefan Schulz, CBR-Works A State-
`of-the-Art Shell for Case-Based
`Application Building, TECINNO
`GmbH, 1999
`
`1317
`
`iii
`
`

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`Patent No. 7,882,057
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`Date
`
`Identifier
`
`Sept. 1976
`
`Stallman
`
`Oct. 14,
`2016
`Oct. 3, 2016
`1992
`
`10/28/15
`
`5/7/15
`
`10/14/15
`
`11/5/15
`
`11/30/15
`
`12/3/15
`
`3/16/15
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`Description
`No.
`1318 Richard M. Stallman and Gerald Jay
`Sussman, Forward Reasoning and
`Dependency-Directed Backtracking In
`a System for Computer-Aided Circuit
`Analysis, MIT Artificial Intelligence
`Laboratory, Memo No. 380, Sept.
`1976
`1319 Bergmann Declaration
`
`1323
`
`1324
`
`1325
`
`Schmitt Declaration
`1320
`1321 Winston Textbook
`1322
`Ford v. Versata, Versata Answer &
`Counterclaims (Dkt. #59)
`Versata v. Ford, Versata Complaint
`(Dkt. #1)
`Ford v. Versata, Opinion and Order
`Denying Motion to Dismiss (Dkt. #55)
`Versata v. Ford, Order to File Notice
`of Good Cause (Dkt. #68)
`Versata v. Ford, Versata Notice
`Regarding Dismissal (Dkt. #69)
`Versata v. Ford, Order of Dismissal
`(Dkt. #70)
`Ford v. Versata, Amended Complaint
`(Dkt. #6)
`
`1326
`
`1327
`
`1328
`
`iv
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`Patent No. 7,882,057
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`
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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
`
`Company v. Versata Software, Inc. F/K/A Trilogy Software, Inc., Trilogy
`
`Development Group, Inc., and Trilogy, Inc., Case No. 2:15-cv-10628-MFL-EAS.
`
`U.S. Patent No. 7,882,057 (“the ’057 Patent”) is being asserted by Versata in this
`
`proceeding, along with seven additional patents. Versata’s counterclaim against
`
`Ford for infringement of the ’057 Patent was filed and served on October 28, 2015.
`
`In connection with this litigation, Versata Software, Inc. has stated that it holds all
`
`right, title, and interest in and to the ’057 Patent.1
`
`The ’057 Patent was also asserted in Versata Development Group, Inc.
`
`F/K/A Trilogy Development Group, Inc., Versata Software, Inc., F/K/A Trilogy
`
`Development Group, Inc., and Trilogy, Inc. v. Ford Motor Company, Case No.
`
`
`1 The most recent assignment recorded with the U.S. Patent and Trademark Office
`
`states that the assignee of the ’057 Patent is Trilogy Development Group, Inc.
`
`v
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`Patent No. 7,882,057
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` Case No: IPR2017-00150
`Attorney Docket No. FPGP0129IPR4
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`4:15-cv-00316-RC-CMC.
`
` This case was dismissed without prejudice on
`
`December 3, 2015.
`
`Petitioner previously filed petitions concerning the ’057 Patent (IPR2016-
`
`01012 and IPR2016-01013) in May 2016, which are currently pending. Further,
`
`Petitioner has filed a concurrent petition concerning the ‘057 Patent (IPR2017-
`
`00151).
`
`
`
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`
`Petitioner appoints John S. LeRoy (Reg. No. 48,158) of Brooks Kushman
`
`P.C. as lead counsel, and appoints Thomas A. Lewry (Reg. No. 30,770), Frank A.
`
`Angileri (Reg. No. 36,733), John P. Rondini (Reg. No. 64,949), 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
`
`FPGP0129IPR4@brookskushman.com.
`
`vi
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`Patent No. 7,882,057
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` Case No: IPR2017-00150
`Attorney Docket No. FPGP0129IPR4
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`I.
`
`Standing Requirements under 37 C.F.R. §42.104
`
`A. Grounds for Standing – 37 C.F.R. §42.104(a)
`
`Petitioner certifies that the ’057 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`1.
`
`The Petition is timely under 35 U.S.C. §315(a) and (b)
`
`On February 19, 2015, Ford filed the Ford lawsuit as a declaratory judgment
`
`action. Ford filed an Amended Complaint on March 16, 2015. (Ex. 1328.) The
`
`Complaint and the Amended Complaint in the Ford lawsuit did not assert
`
`invalidity of any patent. Thus, Ford’s petition is timely under §315(a).
`
`Versata did not file a counterclaim against Ford for infringement of the ‘057
`
`patent in the Ford lawsuit until October 28, 2015. (Ex. 1322.) As such, Ford’s
`
`deadline under §315(b) is October 28, 2016, and this petition is timely.
`
`During the eight months between Ford’s declaratory judgment Complaint
`
`and Versata’s counterclaims, Versata tried, unsuccessfully, to forum shop. On
`
`May 7, 2015, Versata filed a separate lawsuit (the Versata lawsuit) in the Eastern
`
`District of Texas, even though it was not Versata’s home forum.2 Ford never
`
`answered Versata’s Texas complaint. Versata then moved in Michigan to dismiss
`
`the Ford lawsuit or transfer it to Texas. Ford opposed on the grounds, inter alia,
`
`
`2 Versata is located in Austin, which is in the Western District of Texas.
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`1
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`that the Versata case was a nullity because the Texas court did not have personal
`
`jurisdiction over Ford.
`
`Following limited jurisdictional discovery, the Michigan court denied
`
`Versata’s motion to dismiss/transfer and held that Ford’s complaint in the Ford
`
`lawsuit was the operative complaint. (Ex. 1324.) The Texas court then “ordered
`
`the parties to file notice of any good faith reasons that [the Versata lawsuit] should
`
`not be dismissed, without prejudice, so that the issues may [be] dealt with in the
`
`Michigan court.” (Ex. 1325.)
`
`In response to the Texas court’s order, Versata stated, “Versata is not
`
`opposed to dismissal of this action without prejudice as indicated in this Court’s
`
`order.” (Ex. 1326.) The Texas court then dismissed the Versata lawsuit, as
`
`permitted by Fed. R. Civ. P. 41(a)(2), “without prejudice to [Versata’s] ability to
`
`assert its claims in the Michigan court.” (Ex. 1327.) Following the dismissal
`
`without prejudice, the parties and the courts proceeded as if the Texas lawsuit had
`
`never been brought. Versata answered the Michigan complaint and asserted its
`
`first set of counterclaims on October 28. 2015.
`
`The May 7, 2015 filing date of the Versata lawsuit is irrelevant for purposes
`
`of §315(b). “The dismissal of an action without prejudice leaves the parties as
`
`though the action had never been brought.” Oracle Corp. v. Click-To-Call Tech’s
`
`LP, IPR2013-00312, Paper No. 26, pp. 15-18), citing Graves v. Principi, 294 F.3d
`
`2
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`Patent No. 7,882,057
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`1350, 1356 (Fed.Cir.2002); see also CyanoTech Corp. v. Bd. of Trustees of the
`
`Univ. of Ill., IPR2013-00401, Paper No. 17, pp. 9-12 (“Federal courts treat
`
`dismissals without prejudice as an action that de jure never existed.”). This rule
`
`applies regardless of the basis for the dismissal without prejudice. Gordon Howard
`
`Assoc., Inc. v. Lunareye, Inc., IPR2014-01213, Paper No. 11, pp. 13-15 (“courts
`
`generally accord the same legal effect to dismissals without prejudice, regardless
`
`of the basis of the dismissal.”); Nautique Boats Co., Inc. v. Malibu Boars, LLC,
`
`IPR 2014-01045, Paper No. 13, p. 10 (“We are not persuaded that the voluntary or
`
`involuntary nature of the dismissal should have any bearing on this issue.”)
`
`The present case is different from cases where a single district court
`
`consolidated cases pending in the same court under Fed. R. Civ. P. 42. In such
`
`Rule 42 consolidation cases, the PTAB has rejected petitions as untimely under
`
`§315(b). See, e.g., Apple Inc. v. Rensselaer Polytech. Instit. & Dynamic Advances,
`
`LLC, IPR2014-00319, Paper No 12, pp. 4-7 (holding that the earlier complaint
`
`“cannot be treated as if it never existed” because the earlier case was consolidated
`
`with a later case in the same district under Rule 42, and the district court bound the
`
`parties to their positions taken in the earlier case); Histologics, LLC v. CDX
`
`Diagnostics, Inc. et al., IPR2014-00779, Paper No. 6, p. 5 (holding that “the
`
`parties are not left in the same legal position as if the [earlier] action had never
`
`been filed” because the earlier action was consolidated into the later action in the
`
`3
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`same district court); eBay, Inc. v. Adv. Auctions LLC, IPR2014-00806, Paper No.
`
`14, pp. 6-8 (holding that “the parties were not left in the same legal position as if
`
`the underlying complaint had never been served” because the parties filed a “Joint
`
`Motion to Dismiss and Proceed Under Second Action” in the same district, and the
`
`district court granted the parties’ joint motion ordering that discovery and other
`
`work “from the First Action will be treated as if they occurred in the Second
`
`Action.”).
`
`In contrast, the Versata lawsuit and the Ford lawsuit were never
`
`consolidated under Rule 42, nor could they have been because they were pending
`
`in different district courts. Versata agreed to dismissal of the Texas lawsuit, which
`
`the court then dismissed without prejudice. Ford never answered the Texas
`
`complaint. Moreover, the scope of the Michigan case is different than the Texas
`
`case. In its counterclaim in Michigan, Versata dropped many of the patents
`
`Versata had asserted against Ford in Texas.
`
`Under Oracle, Ford’s deadline to file this IPR is October 28, 2016.
`
`2.
`
`This Petition should not be denied under §325(d) if
`IPR2016-01013 is not considered on the merits
`
`This petition asserts the same prior art combination against the same claims
`
`as IPR2016-01013, an earlier petition filed by Ford Motor Company and currently
`
`pending before the PTAB. In its preliminary response to Ford’s petition in
`
`IPR2016-01013, the Patent Owner argued that Ford failed to establish that the
`
`4
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`Patent No. 7,882,057
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` Case No: IPR2017-00150
`Attorney Docket No. FPGP0129IPR4
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`Stahl prior art reference (Ex. 1306) was published before October 4, 2004, the
`
`priority date of the ‘057 Patent. Ford Motor Co. v. Trilogy Development Gp.,
`
`IPR2016-01013, Paper No. 8, pp. 16-23 (August 12, 2016). After filing its petition
`
`in IPR2016-01013, Ford contacted and received declarations from two co-authors
`
`of Stahl, which establish that Stahl was published before October 4, 2004. Those
`
`declarations are not currently of record in IPR2016-01013. Thus, out of an
`
`abundance of caution, Ford now files this petition with the author declarations
`
`attached.
`
`Although 35 U.S.C. §325(d) permits the Board to reject a subsequent
`
`petition for inter partes review if “the same or substantially the same prior art or
`
`arguments previously were presented to the Office,” if the Board denies IPR2016-
`
`01013 based only on the ground that Ford did not prove Stahl was published before
`
`the ‘057 Patent priority date, the Board should not invoke §325(d) here. Section
`
`325(d) has been invoked to prevent a petitioner from using an initial inter partes
`
`review decision as a substantive roadmap to prepare a second petition. See
`
`Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00449, Paper 9, Decision
`
`Instituting Inter Partes Review (July 27, 2016). However, because the Board has
`
`not yet issued an institution decision for IPR2016-01013, and to the extent
`
`institution is denied based only on the non-substantive issue of Stahl’s publication
`
`status, that issue would not arise here.
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`5
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`Indeed, the Board has declined to invoke §325(d) in such circumstances, and
`
`should decline to invoke it here for the same reasons. Coalition for Affordable
`
`Drugs (Adroca) LLC v. Acorda Therapeutics, Inc., IPR2015-01853, Paper 13
`
`(Mar. 11, 2016). In Adroca, the Board had denied a first petition because
`
`“Petitioner failed to make a threshold showing that either poster was sufficiently
`
`publicly accessible to qualify as a ‘printed publication’ under §102(b).” Id. at 12.
`
`Adroca then filed a second petition that corrected that error. The Patent Owner
`
`then urged the Board to reject the new petition under §§314(a) and 325(d). The
`
`Board declined to deny institution under those statutes, explaining:
`
`[W]e did not address whether the S-1 qualified as a “printed
`
`publication” under §102(b), nor whether information before us
`
`established a reasonable likelihood that Petitioner would prevail in
`
`an obviousness challenge based on the S-1. In view of the
`
`circumstances in this case, which differ from those in cases cited by
`
`Patent Owner (Prelim. Resp. 20–23), we decline to deny institution
`
`under §314(a) and §325(d).
`
`Id. at 12-13 (emphasis added).
`
`Likewise, in the present case, if the Board denies IPR2016-01013 based only
`
`on Stahl’s publication status, the Board will not have addressed whether the
`
`combination of Stahl and Loomans renders the patent claims obvious and should
`
`do so for this petition. The Board has reached a similar conclusion in a number of
`
`other decisions where the prior petition had not been considered on its merits. See
`
`6
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`Patent No. 7,882,057
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`Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (Sept. 16, 2015) (“While we
`
`are mindful of the burden on Patent Owner and the Office to rehear the same or
`
`substantially the same arguments that have been considered by the Office in other
`
`proceedings, we note that we did not reach the merits of Petitioner’s arguments
`
`with respect to Ground 1 when considering the ’115 IPR.”) (emphasis added);
`
`Kofax, Inc. v. Uniloc Usa, Inc., IPR2015-01207, Paper 7 (Dec. 2, 2015) (declining
`
`to reject the IPR petition under §325(d) where the Board had not considered the
`
`merits when it denied a prior CBM petition); Par Pharm., Inc. v. Jazz Pharm., Inc.,
`
`IPR2015-00546, Paper 25 (July 28, 2015) (same).
`
`Under these circumstances, it is proper for the Board to consider the present
`
`Petition.
`
`B. Challenged Claims – 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests inter partes review of claims 17, 30, and 44-46 of the
`
`’057 Patent and requests that the Patent Trial and Appeal Board (“PTAB”) cancel
`
`those claims as unpatentable.
`
`C. Grounds of Challenge – 37 C.F.R. §42.104(b)(2)
`
`Petitioner relies on the following prior art for the grounds of unpatentability:
`
`(i)
`
`Loomans – U.S. Patent No. 7,873,503 to Loomans et al. (hereinafter
`
`“Loomans”) was filed on November 18, 2002, published on August 12, 2010 (as
`
`U.S. Patent Application Publication No. 2010/0204970), and issued on January 18,
`
`7
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`Patent No. 7,882,057
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`2011. Loomans qualifies as prior art under at least 35 U.S.C. §102(e). (Ex. 1305.)
`
`(ii) Stahl – A. Stahl, R. Bergmann, S. Schmitt, A Customization
`
`Approach for Structured Products in Electronic Shops, Electronic Commerce: The
`
`End of the Beginning, 13th International Bled Electronic Commerce Conference
`
`(June 19-21, 2000) (hereinafter “Stahl”) (Ex. 1306). Stahl was published no later
`
`than June 19-21, 2000, in the Proceedings book distributed at the 13th
`
`International Bled Electronic Commerce Conference (June 19-21, 2000). (Ex.
`
`1320 at ¶¶2-6; Ex. 1302 at ¶65.) Further, Stahl was made publicly available no
`
`later than May 31, 2000, on the Internet via the webserver of co-author Dr. Ralph
`
`Bergmann, which was linked to the webpage of Dr. Bergmann’s research group
`
`specializing in Artificial Intelligence and Knowledge Based Systems. (Ex. 1319 at
`
`¶¶2-5; Ex. 1302 at ¶66.) Therefore, Stahl qualifies as prior art under at least 35
`
`U.S.C. §§102(a) and 102(b). (Ex. 1306.)
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`The grounds of unpatentability presented in this petition are as follows:
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`GROUND BASIS
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`REFERENCES
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`CLAIMS
`CHALLENGED
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`Loomans, Stahl
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`and
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`the
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`general
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`§103
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`17, 30, and 44-46
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`knowledge of a PHOSITA
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`The unpatentability grounds set forth in this Petition are confirmed and
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`supported by the declaration of Dr. Philip Greenspun. (“Greenspun,” attached as
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`Patent No. 7,882,057
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`Ex. 1302.)
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`II.
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`Introduction
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`The Petitioner Ford Motor Company (“Ford”) respectfully requests inter
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`partes review of claims 17, 30, and 44-46 of U.S. Patent No. 7,882,057 (“the ’057
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`Patent,” attached as Ex. 1301) in accordance with 35 U.S.C. §§311–319 and 37
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`C.F.R. §42.100 et seq.
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`III. Overview of the ’057 Patent
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`The ’057 Patent is titled “Complex Configuration Processing Using
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`Configuration Sub-Models” and is generally directed to a framework for
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`addressing “the issue of configuration model and query complexity by breaking a
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`configuration problem down into a set of smaller problems, solving them
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`individually and recombining the results into a single result.” (Ex. 1301 at
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`Abstract.)
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`(Ex. 1301 at Fig. 4.)
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`IV. Person having ordinary skill in the art (PHOSITA)
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`A PHOSITA would have either: (1) a bachelor’s degree in computer science,
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`electrical engineering, computer engineering, or similar technical field; or (2)
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`equivalent experience in the design or implementation of configuration systems.
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`(Ex. 1302 ¶¶28-30.) The relevant field of art is product configuration software.
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`(Id.)
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`V. Claim Construction – 37 C.F.R. §42.104(b)(3)
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`“A claim in an unexpired patent shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it appears.” 37
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`C.F.R. §42.100(b). 35 U.S.C. §112 ¶6 permits an element in a claim for a
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`combination to be expressed as a means for performing a specified function . 35
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`U.S.C. §112 ¶6. Moreover, “the corresponding structure for a §112 ¶6 claim for a
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`computer-implemented function is the algorithm disclosed in the specification.”
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`Aristocrat Techs. Austl. Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333
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`(Fed.Cir.2008).
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`Various terms from claims 45 and 46 require construction under 35 U.S.C.
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`§112 ¶6. Analysis of the means-plus-function limitations of claims 45 and 46—
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`including identification of the corresponding structure(s) set forth in the ’057
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`Patent’s specification—is included below in connection with the obviousness
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`analysis of the claims.
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`For purposes of this petition, Petitioner does not believe any other terms
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`require construction beyond their plain and ordinary meaning under the broadest
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`reasonable construction standard for this proceeding.
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`VI. Unpatentability Grounds
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`Petitioner asserts that the Challenged Claims are invalid under 35 U.S.C.
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`§103. For the reasons explained in detail below, the Petitioner has established a
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`reasonable likelihood of prevailing on the following grounds of unpatentability. 35
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`U.S.C. §314(a); 37 C.F.R. §42.104(b)(4).
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`A. Ground 1 - Claims 17, 30, and 44-46 are obvious in view of
`Loomans, Stahl, and the general knowledge of a PHOSITA
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`As provided below and supported by the accompanying declaration of Dr.
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`Greenspun, claims 17, 30, and 44-46 are unpatentable as being obvious under 35
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`U.S.C. §103 over Loomans (Ex. 1305), Stahl (Ex. 1306), and the general
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`knowledge of a PHOSITA. Loomans is prior art under at least 35 U.S.C. §102(e)
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`and Stahl is prior art under at least 35 U.S.C. §§102(a) and (b).
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`Method claim 17 of the ’057 Patent closely mirrors system/computer storage
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`medium claims 30 and 44. The claims are nearly identical except their preambles
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`contain slightly different language, claim 17 adds a limitation for performing with
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`a computer system, claim 30 adds processor and storage medium limitations, and
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`claim 44 includes a slightly distinct ordering of the elements. Thus, for efficiency,
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`claims 17, 30 and 44 are analyzed together below.
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`1.
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`Reasons to combine Loomans with Stahl
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`A person having ordinary skill in the art would have found it obvious to
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`combine the teachings from Loomans with the teachings from Stahl. Both
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`Loomans and Stahl describe configuration systems that are based on the concept of
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`eliminating configuration complexity by dividing a configuration problem into
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`simpler sub-problems. Indeed, Loomans expressly describes partitioning a top-
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`entity parent model into sub-configurable sub-models so that the sub-models can
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`be configured and validated. (Ex. 1305 at 1:57-65.) (Ex. 1302 at ¶151.)
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`Similarly, Stahl discloses dividing configuration queries into sub-problems,
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`which can then be solved via sub-solutions, and the sub-solutions can then be
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`combined to create a final answer to the query. (Ex. 1306 at 6.) Thus, both
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`Loomans and Stahl describe using decomposition to evaluate rules in a
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`configuration system. Both Loomans and Stahl use the configuration of a personal
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`computer as an example. At the time of the alleged invention, a software engineer
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`interested in building a high-performance configuration system, e.g., one that can
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`respond in real-time to customers trying to order products on a web site, would
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`have had good reason to draw guidance from the configuration approaches
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`described in Loomans as well as Stahl. A configuration system with the rule-
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`evaluation mechanism of Loomans (checking a configuration table or a sub-
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`configuration table) would likely run faster. A configuration with the rule-
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`evaluation mechanism of Stahl would work better in situations where the vendor
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`did not expect to be able to find an exact match for a customer’s requirements. (Ex.
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`1302 at ¶152.)
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`Although both Loomans and Stahl are addressing a common problem in the
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`prior art, the emphasis of Loomans and Stahl are somewhat different. Loomans
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`provides more details about how to ensure that answers to configuration queries
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`are processed in a roughly constant amount of time. This is based on the fact that
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`any set of values from a customer-specified configuration can be looked up in the
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`configuration and sub-configuration tables of Loomans in a roughly constant
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`amount of time. (Ex. 1305 at 4:26-29, 11:39-46). Stahl provides more details about
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`how to deal with situations in which the customer’s requirements are over-
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`specified to the point that no configuration can satisfy every requirement. (“the
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`most suitable component that is available within the component case-base,” (Ex.
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`1306 at 9); “If it is impossible to determine a weak part whose adaption could
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`perhaps improve the product, the complete configuration process is succeeded and
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`the final product can be presented to the customer,” (Id.), making it clear that the
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`system produces the best result that it can). Taken together, these references
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`comfortably render obvious the subject matter of the challenged claims. Thus, to
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`the extent that Stahl does not expressly disclose dividing configuration models into
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`sub-models to process sub-problems, or equivalents thereof, it would have been
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`obvious to a person having ordinary skill in the art to use the rule database system
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`described in Loomans, including the use of sub-models for sub-configuration, with
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`the rule evaluation system described in Stahl. (Ex. 1302 at ¶153.)
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`First, using the case-based reasoning of Stahl, at least for some of the sub-
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`models, would improve the functionality of the configuration system described in
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`Loomans. As noted above, Loomans gives quick and certain answers but, unless an
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`invalid configuration has been expected by the developers and placed into an
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`“exception table,” it is difficult to give the user a full explanation as to why a
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`configuration is invalid. (Ex. 1305 at 11:39-46.) The case-based reasoning of Stahl
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`would help in situations where Loomans was applied to products in which it was
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`unlikely that all of a customer’s preferences could be satisfied simultaneously, e.g.,
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`the customer wants a car with sport functionality that also seats 8. (Ex. 1302 at
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`¶154.)
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`Second, for similar reasons, a PHOSITA would have concluded that it was
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`obvious to try using the rule evaluation system of Stahl with at least some of the
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`sub-models of Loomans. During the rule-preparation process of Loomans it might
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`have been discovered that the exception table was growing to an extremely large
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`size. Recall that in the configuration system described in Loomans, if a
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`configuration is found in a configuration table it is valid; if not found in the
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`configuration table it is not valid. (Ex. 1305 at 4:26-28, 11:39-46). A customer
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`whose requested configuration comes back as “invalid” cannot get any explanation
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`of the problem unless the requested configuration was anticipated by the
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`programmers and maintainers of the system and recorded in the exception table.
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`Customers calling up to ask “Why can’t I place an order?” would have motivated a
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`PHOSITA to use the more flexible rule evaluation system of Stahl at least in
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`whichever sub-model was proving difficult to satisfy. (Ex. 1302 at ¶155.)
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`Further, because the sub-models in Loomans are designed for use in
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`configuring sub-configurable options, and Stahl teaches that the described sub-
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`problems represent configuration problems for parts (i.e., sub-configurable
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`options), using the rule evaluation system of Stahl to evaluate one or more of the
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`sub-models taught in Loomans would have yielded a predictable solution to
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`configuring the overall product taught in Loomans with increased efficiency than
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`previous configuration methods. A PHOSITA would have known that modifying
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`the teachings of Loomans configuration to use Stahl’s method of rule evaluation on
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`at least some sub-models would have been a sim