UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
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`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 7,882,057 to Little et al.
`
`Case No.: IPR2017-00151
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 1-16, 18-29, AND 31-43 OF U.S. PATENT NO. 7,882,057)
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`

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`Patent No. 7,882,057
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` Case No: IPR2017-00151
`Attorney Docket No. FPGP0129IPR3
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`
`Table of Contents
`
`List of Exhibits ......................................................................................................... iii
`
`Mandatory Notices Under 37 C.F.R. §42.8 ............................................................. vi
`
`Real Party-In-Interest – 37 C.F.R. §42.8(b)(1) ............................................. vi
`Related Matters 37 C.F.R. §42.8(b)(2) .......................................................... vi
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ........................... vii
`Service Information Under 37 C.F.R. §42.8(b)(4) ....................................... vii
`
`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
`IPR2016-01012 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 1-16, 18-29 and 31-43 are Obvious in View
`of Loomans, Stahl, and the General Knowledge of a PHOSITA .......11
`1.
`Reasons to combine Loomans with Stahl .................................12
`2.
`Independent Claims 1, 18 and 31 ..............................................16
`3.
`Dependent Claims 2-16, 19-29 and 32-43 ................................41
`a.
`Claims 2, 19 and 32 ........................................................41
`
`Claims 3 and 33 ..............................................................44
`b.
`
`Claims 4, 20 and 34 ........................................................46
`c.
`
`Claims 5, 21 and 35 ........................................................48
`d.
`
`Claims 6, 22 and 36 ........................................................51
`e.
`
`Claims 7, 23 and 37 ........................................................53
`f.
`
`Claims 8, 24 and 38 ........................................................56
`g.
`
`Claims 9, 25 and 39 ........................................................59
`h.
`
`Claims 10, 27 and 41 ......................................................63
`i.
`
`Claims 11, 26, 28, 40 and 42 ..........................................65
`j.
`
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`i
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`Patent No. 7,882,057
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`k.
`
`l.
`
`m.
`n.
`
`o.
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`
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`Claims 12, 29 and 43 ......................................................69
`Claim 13 ..........................................................................70
`Claim 14 ..........................................................................71
`Claim 15 ..........................................................................73
`Claim 16 ..........................................................................75
`
`VII. Conclusion .....................................................................................................76
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`VIII. Fee Statement .................................................................................................76
`
`Certificate of Service ...............................................................................................78
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................80
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`ii
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`Patent No. 7,882,057
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`
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`List of Exhibits
`
`Exhibit
`Description
`No.
`1201 U.S. Patent No. 7,882,057
`1202
`Expert Declaration of Dr. Philip
`Greenspun
`1203 Curriculum Vitae of Dr. Philip
`Greenspun
`1204 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
`
`1205 U.S. Patent No. 7,873,503 to Loomans
`et al.
`1206 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)
`1207 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)
`
`1208
`
`iii
`
`

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`Patent No. 7,882,057
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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
`
`1210
`
`1211
`
`Exhibit
`Description
`No.
`1209 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)
`1212 Bryan M. Kramer, Knowledge-Based
`Configuration of Computer Systems
`Using Hierarchial Partial Choice,
`IEEE (1991)
`1213 Bei Yu and Hans Jorgen Skovgaard, A
`Configuration Tool to Increase
`Product Competitiveness, IEEE
`Intelligent Systems, 34-41
`(July/August 1998)
`1214 U.S. Patent Application Publication
`No. 2003/0187950 to Rising
`1215 Martin R. Wagner, Understanding the
`ICAD System, ICAD, Inc., 1990
`1216 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
`
`1217
`
`iv
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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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`Exhibit
`Description
`No.
`1218 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
`1219 Bergmann Declaration
`
`1223
`
`1224
`
`1225
`
`Schmitt Declaration
`1220
`1221 Winston Textbook
`1222
`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)
`
`1226
`
`1227
`
`1228
`
`v
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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.
`
`4:15-cv-00316-RC-CMC.
`
` This case was dismissed without prejudice on
`
`
`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.
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`vi
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`Patent No. 7,882,057
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`December 3, 2015.
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` Case No: IPR2017-00151
`Attorney Docket No. FPGP0129IPR3
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`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-
`
`00150).
`
`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,
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`Southfield, Michigan 48075.
`
` Petitioner consents to service by email at
`
`FPGP0129IPR3@brookskushman.com.
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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. 1228.) 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. 1222.) 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. 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,
`
`that the Versata case was a nullity because the Texas court did not have personal
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`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. 1224.) 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. 1225.)
`
`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. 1226.) 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. 1227.) 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.
`
`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
`
`1350, 1356 (Fed. Cir. 2002); see also CyanoTech Corp. v. Bd. of Trustees of the
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`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,
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`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 same district
`
`court); eBay, Inc. v. Adv. Auctions LLC, IPR2014-00806, Paper No. 14, pp. 6-8
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`(holding that “the parties were not left in the same legal position as if the
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`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
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`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
`IPR2016-01012 is not considered on the merits
`
`This petition asserts the same prior art combination against the same claims
`
`as IPR2016-01012, an earlier petition filed by Ford Motor Company and currently
`
`pending before the PTAB. In its preliminary response to Ford’s petition in
`
`IPR2016-01012, the Patent Owner argued that Ford failed to establish that the
`
`Stahl prior art reference (Ex. 1206) was published before October 4, 2004, the
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`priority date of the ‘057 Patent. Ford Motor Co. v. Trilogy Development Gp.,
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`IPR2016-01012, Paper No. 10, pp. 16-23 (August 12, 2016). After filing its
`
`petition in IPR2016-01012, 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 IPR2016-01012. 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-
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`01012 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 IPR2016-01012, 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.
`
`Indeed, the Board has declined to invoke §325(d) in such circumstances, and
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`should decline to invoke it here for the same reasons. Coalition for Affordable
`
`Drugs (Adroca) LLC v. Acorda Therapeutics, Inc., IPR2015-01853, Paper 13
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`(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
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`then urged the Board to reject the new petition under §§314(a) and 325(d). The
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`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
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`under §314(a) and §325(d).
`
`Id. at 12-13 (emphasis added).
`
`Likewise, in the present case, if the Board denies IPR2016-01012 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
`
`Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (Sept. 16, 2015) (“While we
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`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 the circumstances discussed above, the Board should consider the
`
`present Petition.
`
`B. Challenged Claims – 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests inter partes review of claims 1-16, 18-29, and 31-43 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,
`
`2011. Loomans qualifies as prior art under at least 35 U.S.C. §102(e). (Ex. 1205.)
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`7
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`(ii) Stahl – A. Stahl, R. Bergmann, S. Schmitt, A Customization
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`Approach for Structured Products in Electronic Shops, Electronic Commerce: The
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`End of the Beginning, 13th International Bled Electronic Commerce Conference
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`(June 19-21, 2000) (hereinafter “Stahl”) (Ex. 1206). Stahl was published no later
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`than June 19-21, 2000, in the Proceedings book distributed at the 13th
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`International Bled Electronic Commerce Conference (June 19-21, 2000). (Ex.
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`1220 at ¶¶2-6; Ex. 1202 at ¶65.) Further, Stahl was made publicly available no
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`later than May 31, 2000, on the Internet via the webserver of co-author Dr. Ralph
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`Bergmann, which was linked to the webpage of Dr. Bergmann’s research group
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`specializing in Artificial Intelligence and Knowledge Based Systems. (Ex. 1219 at
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`¶¶2-5; Ex. 1202 at ¶66.) Therefore, Stahl qualifies as prior art under at least 35
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`U.S.C. §§102(a) and 102(b). (Ex. 1206.)
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`Neither Loomans nor Stahl were of record during prosecution of the ‘057
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`Patent.
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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
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`1
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`§103
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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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`1-16, 18-29, and
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`knowledge of a PHOSITA
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`31-43
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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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`Ex. 1202.)
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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 1-16, 18-29, and 31-43 of U.S. Patent No. 7,882,057 (“the
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`‘057 Patent,” attached as Ex. 1201) in accordance with 35 U.S.C. §§311–319 and
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`37 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. 1201 at
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`Abstract.)
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`(Ex. 1201 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. 1202 at ¶¶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). For purposes of this petition, Petitioner 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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`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 1-16, 18-29 and 31-43 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 (Ex. 1202), claims 1-16, 18-29 and 31-43 are unpatentable as being
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`obvious under 35 U.S.C. §103 over Loomans (Ex. 1205), Stahl (Ex. 1206), and the
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`general knowledge of a PHOSITA. As set forth above, Loomans is prior art under
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`at least 35 U.S.C. §102(e) and Stahl is prior art under at least 35 U.S.C. §§102(a)
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`and (b).
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`Method claim 1 of the ‘057 Patent closely mirrors the system/computer
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`storage medium claims 18 and 31. Indeed, the claims are nearly identical besides
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`that their preambles contain slightly different language – claim 1 adds a limitation
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`for performing with a computer system, and claim 18 adds processor/storage
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`medium limitations. Thus, for efficiency, claims 1, 18 and 31 are analyzed together
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`below.
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`1.
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`Reasons to combine Loomans with Stahl
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`A PHOSITA would have found it obvious to combine the teachings from
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`Loomans with the teachings from Stahl. (Ex. 1202 at ¶144.) Both Loomans and
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`Stahl describe configuration systems that are based on the concept of eliminating
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`configuration complexity by dividing a configuration problem into simpler sub-
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`problems. Indeed, Loomans expressly describes partitioning a top-entity parent
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`model into sub-configurable sub-models so that the sub-models can be configured
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`and validated. (Ex. 1205 at 1:57-65; Id.)
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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. 1206 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. (Ex. 1202 at ¶145.) Both Loomans and Stahl use the
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`configuration of a personal computer as an example. At the time of the alleged
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`invention, a software engineer interested in building a high-performance
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`configuration system, e.g., one that can respond in real-time to customers trying to
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`order products on a web site, would have had good reason to draw guidance from
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`the configuration approaches described in Loomans as well as Stahl. (Id.) A
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`configuration system with the rule-evaluation mechanism of Loomans (checking a
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`configuration table or a sub-configuration table) would likely run faster. A
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`configuration system with the rule-evaluation mechanism of Stahl would work
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`better in situations where the vendor did not expect to be able to find an exact
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`match for a customer’s requirements. (Id.)
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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. (Ex. 1202 at
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`¶146.) Loomans provides more details about how to ensure that answers to
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`configuration queries are processed in a roughly constant amount of time. (Id.)
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`This is based on the fact that any set of values from a customer-specified
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`configuration can be looked up in the configuration and sub-configuration tables of
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`Loomans in a roughly constant amount of time. (Ex. 1205 at 4:26-29, 11:39-46.)
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`Stahl provides more details about how to deal with situations in which the
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`customer’s requirements are over-specified to the point that no configuration can
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`satisfy every requirement. (“the most suitable component that is available within
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`the component case-base,” (Ex. 1206 at 9); “If it is impossible to determine a weak
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`part whose adaption could perhaps
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`improve
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`the product,
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`the complete
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`configuration process is succeeded and the final product can be presented to the
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`customer,” (Id.), making it clear that the system produces the best result that it
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`can). (Ex. 1202 at ¶146.) Taken together, these references comfortably render
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`obvious the subject matter of the challenged claims. (Id.) Thus, to the extent that
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`Stahl does not expressly disclose dividing configuration models into sub-models to
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`process sub-problems, or equivalents thereof, it would have been obvious to a
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`PHOSITA to use the rule database system described in Loomans, including the use
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`of sub-models for sub-configuration, with the rule evaluation system described in
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`Stahl. (Ex. 1202 at ¶146; Id.)
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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. (Ex. 1202 at ¶147.) As noted above, Loomans gives quick and certain
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`answers but, unless an invalid configuration has been expected by the developers
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`and placed into an “exception table,” it is difficult to give the user a full
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`explanation as to why a configuration is invalid. (Ex. 1205 at 11:39-46; Id.) The
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`case-based reasoning of Stahl would help in situations where Loomans was applied
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`to products in which it was unlikely that all of a customer’s preferences could be
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`satisfied simultaneously, e.g., the customer wants a car with sport functionality that
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`also seats 8. (Ex. 1202 at ¶147; Id.)
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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. (Ex. 1202 at ¶148.) During the rule-preparation process
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`of Loomans it might have been discovered that the exception table was growing to
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`an extremely large size. (Id.) Recall that in Loomans, if a configuration is found in
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`a configuration table it is valid; if not found in the configuration table it is not
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`valid. (Ex. 1205 at 4:26-28, 11:39-46; Id.) A customer whose requested
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`configuration comes back as “invalid” cannot get any explanation of the problem
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`unless the requested configuration was anticipated by the programmers and
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`maintainers of the system and recorded in the exception table. (Id.) Customers
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`calling up to ask “Why can’t I place an order?” would have motivated a PHOSITA
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`to use the more flexible rule evaluation system of Stahl at least in whichever sub-
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`model was proving difficult to satisfy. (Ex. 1202 at ¶148.)
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`Finally, 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 (e.g., sub-configurable
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`options)