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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`CONFIGIT A/S,
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner
`___________________
`
`Case IPR2021-01055
`U.S. Patent No. 6,836,766
`___________________
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`
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`PATENT OWNER’S RESPONSE
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`
`
`
`
`
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`

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`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`I.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`
`Summary of the ’766 patent ......................................................................... 2
`A.
`The ’766 patent describes a problem with conflicting rules in a
`complex configurator. ........................................................................ 2
`Two types of configuration errors ...................................................... 5
`1.
`State errors ............................................................................... 5
`2.
`Exception errors ....................................................................... 6
`The ’766 patent teaches and claims a debugger for high-
`complexity configuration systems. ..................................................... 7
`Configuration Error Testing ............................................................... 9
`D.
`Prosecution history: the examiner tested the ’766 patent .............................10
`II.
`Person of ordinary skill in the art ................................................................10
`III.
`IV. A “configuration error” is the condition that occurs when “a rule or series
`of rules is not properly defined and produces an undesired effect” or “a
`series of improperly defined rules causes a part to be in more than one
`state at the same time” and is internal to the configuration engine. .............11
`A.
`The explicit definition of configuration errors is that they are
`internal to the configurator. ...............................................................13
`Every example in the specification shows configuration errors
`internal to the configurator. ...............................................................14
`Those of skill in the art know that configuration errors are
`internal to the configurator. ...............................................................16
`D. Dr. Wood’s testimony, to the extent it is reliable, supports
`Patent Owner’s claim interpretation. .................................................18
`1.
`Dr. Wood’s Technology Background exclusively
`describes configuration errors according to the Patent
`Owner’s construction. .............................................................19
`Dr. Wood’s other testimony either agrees with the Patent
`Owner’s definition or is bare hindsight. ..................................21
`a)
`“Main Prior Art” testimony uses a completely
`different understanding of configuration error that is a
`mere hindsight reading of the claims onto a piece of
`prior art. ........................................................................21
`
`B.
`
`C.
`
`2.
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`b)
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`c)
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`V.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`In Dr. Wood’s “Main Opinions re: Reasons to
`Combine,” he alternates between applying hindsight
`against the asserted art and using the proper
`definition. .....................................................................23
`Opinions regarding Individual Elements is also based
`on hindsight. .................................................................24
`Claims 1-5 & 9-19 are not unpatentable ......................................................25
`A. Ground 1: Oracle1 in view of Oracle2 does not render claims 1,
`9-10, 14, 19 obvious .........................................................................25
`1.
`Oracle1 describes an implementation of a product
`configurator rather than a debugger for configurators .............27
`Oracle2 is similar to Oracle1 ...................................................29
`Independent claim 1 is not invalid because Oracle1 and
`Oracle2 do not teach a configuration error ..............................29
`a)
`Oracle1 does not teach the “configuration error” of
`the preamble (element 1.pre(i)) .....................................29
`Oracle1 and Oracle2 do not teach processing anything
`to detect whether any changes produce a configuration
`error (element 1.2) ........................................................31
`Oracle1 and Oracle2 do not teach an explanation of a
`configuration error (element 1.3) ..................................33
`Dependent claim 9 is not taught by Oracle1 and Oracle2 ........34
`4.
`Dependent claim 10 is not taught by Oracle1 and Oracle2 ......34
`5.
`Dependent claim 14 ................................................................35
`6.
`Dependent claim 19 ................................................................35
`7.
`Reasons to combine Oracle1 and Oracle2 ...............................35
`8.
`Ground 2: The Oracle1-Oracle2 Combination in Further View
`of SalesPlus does not render claims 15 and 16 obvious .....................36
`Ground 3: The Oracle1-Oracle2 combination in further view of
`SalesPlus, and Yu do not renders claims 11-13 and 17 obvious .........36
`D. Ground 4: The Oracle1-Oracle2 combination in further view of
`Memon do not render claims 2 and 18 obvious .................................36
`
`2.
`3.
`
`b)
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`c)
`
`B.
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`C.
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`E.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Ground 5: The Oracle1-Oracle2-Memon combination in further
`view of SalesPlus do not render claims 3-5 obvious ..........................36
`VI. Dr. Wood’s declaration should be entitled to little weight because cross-
`examination revealed that Dr. Wood considers his opinions to be
`incomplete. .................................................................................................37
`VII. Conclusion ..................................................................................................40
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`PATENT OWNER’S EXHIBIT LIST
`
`
`Description
`Declaration of Paul A. Navrátil in Support of Patent Owner’s
`Preliminary Response
`Curriculum vitae of Paul A. Navrátil
`Lora Green & Brian McNamara (JJ.), Best Practices for Proving a
`Document is a Printed Publication, at 14 (Dec. 7, 2017), at
`https://www.uspto.gov/sites/default/files/documents/proving_a_docu
`ment_is_a_printed_publication_12_7_2017.pdf
`Declaration of Paul A. Navrátil in Support of Patent Owner’s
`Response
`Transcript of the Deposition of Kristin L. Wood, Ph.D., taken March
`10, 2022.
`
`Exhibit
`No.
`2001
`2002
`
`2003
`
`2004
`
`2005
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`This case turns on whether a “configuration error in the product
`
`configuration”—a necessary element of the challenged claims—refers to (1)
`
`simply warning a user when they attempt a part selection that is disallowed by
`
`properly functioning rules, or (2) detecting whether the rules themselves are
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`improperly defined, thereby producing an internal error in the configuration engine
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`itself. The claims and specification of U.S. Patent No. 6,836,766 (“the ’766
`
`patent”), as well as the knowledge of a person of ordinary skill, mandate the latter
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`interpretation.
`
`As detailed below, the claims of the ’766 patent make it clear that a
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`configuration error occurs “in the product configuration,” thereby establishing that
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`such errors are internal to the configuration engine itself. The specification of the
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`’766 patent confirms this fact, explaining that a configuration error occurs “in a
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`system for configuring products.” Thus, pursuant to the plain language of both the
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`claims and specification, a “configuration error” is an error that occurs within the
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`configuration engine as a result of changes made to the configuration engine—it is
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`not simply a message, generated by a properly functioning configuration engine,
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`indicating that a part selection is prohibited due to correctly functioning rules. This
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`fact is reinforced by Petitioner’s own expert, who testifies that configuration errors
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`are internal errors in the configuration engine itself.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Accordingly, when viewed under the correct lens, it is readily apparent that
`
`none of Petitioner’s cited references disclose the recited “configuration error in the
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`product configuration.” To the contrary, Oracle1—the reference on which
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`Petitioner relies for this claim element—simply prevents an end-user from making
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`a part selection excluded by a properly functioning configuration engine. But
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`nothing in Oracle 1 teaches or remotely suggests detecting errors within the
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`configuration engine itself—i.e., detecting an improperly functioning
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`configuration engine as described in the ’766 patent. As a result, because
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`Petitioner does not and cannot demonstrate that this element is present in any of
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`the cited references, the Petition necessarily fails.
`
`I.
`
`SUMMARY OF THE ’766 PATENT
`A. The ’766 patent describes a problem with conflicting rules in a
`complex configurator.
`As explained in the POPR, the ’766 patent is about “testing the compatibility
`
`of parts included in a configurator.” EX1001, 1:7-10; EX2004, ¶13. The patent
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`describes prior art “configuring systems” or “configuration engines.” EX1001,
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`1:13-17; EX2004, ¶13. According to the patent, these prior art devices “allow a
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`user to configure a product by interactively selecting components from among
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`various groups based on availability and compatibility of features and options.”
`
`EX1001, 1:13-17; EX2004, ¶13.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`The configurator allows “a user to configure a product by interactively
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`selecting components.” EX1001, 1:13-22; EX2004, ¶14. The configured “product
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`might consist of several hundred individual parts” that might be available on
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`multiple products. EX1001, 1:27-29; EX2004, ¶14. When engineers design the
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`configurator, they define a complicated product structure and then define
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`relationships between parts not defined in the product structure:
`
`A product is modeled by describing which parts and part groups are
`available in that product and which choices must be made from within
`the part groups, and then by writing additional rules that describe part-
`to-part relationships which are not modeled by the product structure.
`
`EX1001, 1:28-33.
`
`After an engineer creates those descriptions and rules, a “compiler converts
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`the product structure and the rules into” defined, computer-readable rule types. Id.,
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`1:33-37; EX2004, ¶15. The four types of compiled rules are:
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`• “includes” rules, which are parts included by default;
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`• “excludes” rules, which are parts excluded by default;
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`• “removes” rules, which are parts that were previously included but are now
`deleted1; and
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`1 This rule type is generally not present in the initial configuration but is a valid
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`rule state once another choice has been made. EX2004, ¶17.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`• “requires” choice rules, which are parts that require “a choice among a group
`of parts.” EX1001, 1:27-50; EX2004, ¶15.
`
`The configurator, however complex, must always find each and every “part” in one
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`and only one state. EX1001, 1:50-51; EX2004, ¶16. For example, a part cannot
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`simultaneously be in an “include” state and an “exclude” state. EX1001, 1:50-51.
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`The specification envisions that there will be “several hundred, several
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`thousand, or even more” rules. EX1001, 1:41-45; EX2004, ¶18. The patent
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`describes a system without a simple, linear decision tree. In other words, the
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`complete order of part selections is not predetermined. At the beginning of a
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`configuration, every part is in the “selectable” state, since no choices have been
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`made. EX1001, 1:41-45; EX2004, ¶18. Once any selection is made, the
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`configurator rules must ensure that the state of all the other parts is in one and only
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`one state. EX1001, 1:34-53; EX2004, ¶18.
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`Because the configurator is complicated, the ’766 patent teaches that “errors
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`may be difficult to find due to the large number of rules in the model, the
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`unexpected effects of some configuration operations, and the complex interactions
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`between rules.” EX1001, 1:62-65; EX2004, ¶19.
`
`This is why the patent teaches a “method and apparatus for testing a system
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`for maintaining and configuring products.” EX1001, 3:56-59. In the disclosure of
`
`the ’766 patent, those of skill would understand “user” to be a configuration
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`engineer using the invention to support product definition design and
`
`implementation rather than a configuration user who uses a given product
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`definition outside the creation and maintenance process. EX2004, ¶52.
`
`Two types of configuration errors
`B.
`The patent characterizes the two kinds of configuration errors that can be
`
`introduced to a configurator: state errors and exception errors. EX1001, 6:41-45;
`
`EX2004, ¶21.
`
`State errors
`1.
`The first type of configuration error occurs “when a rule or series of rules is
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`not properly defined and produces an undesired effect.” EX1001, 1:52-57;
`
`EX2004, ¶22. An example of this, according to the specification, is “the exclusion
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`of a part that should be selectable.” EX1001, 1:52-57; EX2004, ¶22.
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`“[S]tate error[s],” like this happen when a “part is put in a state which was
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`not intended by the user.” EX1001, 6:46-47; EX2004, ¶23. Note that the “user”
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`here is not a customer end user of a product configurator, but rather is a user of the
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`debugging/programming interface. See, e.g., EX1001, FIG. 3 (302) (noting the use
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`of a configuration tester GUI); EX2004, ¶23. These state errors, according to the
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`’766 patent, occur “when a rule has been accidentally omitted or written.” EX1001,
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`7:8-10; EX2004, ¶23.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`In an exemplary state error of the ’766 patent, the configurator is supposed
`
`to permit PartC to be selectable when PartA and PartB are selected. EX1001, 7:9-
`
`12; EX2004, ¶24. The configurator, however, experiences a state error when PartC
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`is “excluded rather than selectable” when PartA and PartB are selected. EX1001,
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`7:10-13; EX2004, ¶24. This state error can be caused by a complex web of
`
`interrelated rules. EX1001, 7:19-23; EX2004, ¶24. It’s important to note that this is
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`not an error that occurs when the configurator rule correctly prohibits PartC from
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`being selected in connection with PartA and PartB. EX2004, ¶24.
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`Exception errors
`2.
`The second type of configuration error occurs when rules cause “a part to be
`
`in more than one state at the same time.” EX1001, 1:57-61; EX2004, ¶25. This
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`means, for instance, that a part is simultaneously defined as “‘included’ and
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`‘excluded.’” EX1001, 1:57-61; EX2004, ¶25.
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`“[E]xception error[s]” like this occur when a “part is put in more than one
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`state at the same time.” EX1001, 6:48-49; EX2004, ¶26. The paradigmatic
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`example of this, according to the ’766 patent, is “PartA includes PartB” and “PartB
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`excludes PartA.” EX1001, 7:39-42; EX2004, ¶26. So here, for example, one rule
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`will set “PartA” to “selected” and “PartB” to “include.” Another, simultaneous rule
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`will set “PartA” to “exclude.” EX1001, 7:39-45; EX2004, ¶26. This is an exception
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`type configuration error. And, unsurprisingly, most exception errors are more
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`complicated than this straightforward example. EX1001, 7:46-49.
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`C. The ’766 patent teaches and claims a debugger for high-
`complexity configuration systems.
`The ’766 patent then describes its innovative approach to debugging internal
`
`configuration errors of a configurator. In the inventive debugging system, the “user
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`provides test cases that select at least one part to include in the product
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`configuration.” EX1001, 2:7-11; EX2004, ¶27. Then, the “configuration tester
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`processes the rule to determine whether” the configuration choice in the test case
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`“conflicts with the plurality of parts” in the configurator. EX1001, 2:7-11. There
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`are a number of different embodiments of the tester described, but they all select
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`parts and determine whether there is an internal configuration error in the
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`configurator. The tester is used by a debugging user (like the engineer in charge of
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`designing, debugging, and implementing the configurator) and not by end users.
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`In the claimed embodiment, the configuration tester includes a “listener” or
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`“driver and listener.” EX1001, 2:27-32; FIG. 3A (316); EX2004, ¶28. This
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`component “detects state change events that result in the system being in the
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`initialized part state.” EX1001, 2:27-34; EX2004, ¶28.
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`To display the part state to the debugging user, the ’766 patent discloses an
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`“explainer.” EX1001, 2:39-42; EX2004, ¶29. The explainer “generates an
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`explanation for the part state.” EX1001, 2:39-42; EX2004, ¶29. This allows the
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`debugging user to pinpoint where rule execution caused a disallowed state
`
`configuration error. As the patent states, “[t]he explanation(s) are based on
`
`selection of a part, execution of a rule, a part being in two states at the same time, a
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`require[d] choice rule that cannot be satisfied, or on a look ahead process.”
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`EX1001, 2:43-46; EX2004, ¶29.
`
`As the patent states, “the invention detects and analyzes configuration errors
`
`in a system for configuring products.” EX1001, 4:63-65 (emphasis added);
`
`EX2004, ¶30. This is not directed to analyzing external errors caused when a part
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`selection is prevented by properly functioning rules. EX2004, ¶30.
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`According to the specification of the ’766 patent, the system and method
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`concern a “Configuration Tester GUI.” EX1001, FIG. 3 (302).
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`EX1001, FIG. 3 (annotated).
`
`
`
`D. Configuration Error Testing
`Figure 3 of the ’766 patent includes a specific test case embodiment for use
`
`with the “Configuration Tester GUI.” EX1001, 7:59-8:5; EX2004, ¶32. In an
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`example of this embodiment, the test case specifies that ProductA and PartA are
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`selected, which establishes the states of ProductA and PartA without external user
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`input selections. EX1001, 8:6-7; EX2004, ¶32. When the test case is run, it also
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`ensures that PartB and PartC are excluded and that PartD is included. EX1001, 8:8-
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`10; EX2004, ¶32. In response to the system processing the test case, the
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`“configuration tester modules [] run each test case.” EX1001, 8:10-15; EX2004,
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`¶32. “If a test fails,” the configuration determines the state problem. EX1001, 8:10-
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`15; EX2004, ¶29.
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`Figure 3 is identified as an embodiment of the invention, though it is
`
`important to note that no embodiments offer any contrary behavior with respect to
`
`the configuration error behavior.
`
`II.
`
`PROSECUTION HISTORY: THE EXAMINER TESTED THE ’766
`PATENT
`The file history of the ’766 patent runs, even by Configit’s analysis, to over
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`200 pages. EX1011. There was an office action, id., 164-174, and a corresponding
`
`amendment, id., 175-198. The examiner correctly stated in the reason for
`
`allowance that the prior art does not teach the claimed “computer system to test an
`
`electronically stored product configuration for errors.” Id., 205. The file history
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`includes evidence of an extensive prior art search conducted by the examiner. E.g.,
`
`id., 121-142 (searching IEEE Xplore database), 143-162 (searching ACM portal),
`
`163 (searching USPTO database).
`
`The Prosecution history is silent as to configuration error, the key disputed
`
`term.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`The Petition suggests the following level of ordinary skill in the art:
`
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`[A] person with a Bachelor’s degree in Computer Science, Computer
`or Electrical Engineering, Engineering Science, an engineering major
`with a significant computational component, or a similar discipline, or
`with at least two years of research or experience in configurable
`systems including testing.
`
`Petition, 8.
`
`There may be some differences between this and the correct level of skill in
`
`the art, but those differences will not affect this case at this stage. EX2004, ¶¶35-
`
`37. For that reason, the Patent Owner (“PO”) will apply this definition in this
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`proceeding without agreeing to it.
`
`IV. A “CONFIGURATION ERROR” IS THE CONDITION THAT
`OCCURS WHEN “A RULE OR SERIES OF RULES IS NOT
`PROPERLY DEFINED AND PRODUCES AN UNDESIRED EFFECT”
`OR “A SERIES OF IMPROPERLY DEFINED RULES CAUSES A
`PART TO BE IN MORE THAN ONE STATE AT THE SAME TIME”
`AND IS INTERNAL TO THE CONFIGURATION ENGINE.
`Configuration error means either (1) the condition that occurs when “a rule
`
`or series of rules is not properly defined and produces an undesired effect” or (2)
`
`“a series of improperly defined rules causes a part to be in more than one state at
`
`the same time.” EX1001, 1:54-61; EX2004, ¶40; accord DI, 7-8. The Institution
`
`Decision properly adopted this construction. The Institution Decision goes on to
`
`find that “the first part of the construction, namely rules not being properly defined
`
`and ‘produc[ing] an undesired effect,’ does not specify anything about an error
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`being ‘internal’ to the configuration engine.” ID, 8. But the ’766 patent explicitly
`
`defines configuration errors as occurring “in” the configuration.
`
`As the Board acknowledged, a “configuration error[]” according to the ’766
`
`patent, occurs in two circumstances. First, it “may occur when a rule or series of
`
`rules is not properly defined and produces an undesired effect, such as the
`
`exclusion of a part that should be selectable.” EX1001, 1:54-61; EX2004, ¶40.
`
`Second, a configuration error “may also occur when a series of improperly defined
`
`rules causes a part to be in more than one state at the same time, such as ‘included’
`
`and ‘excluded,’ or ‘selected’ and ‘deleted.’” EX1001, 1:54-61; EX2004, ¶40. The
`
`specification teaches that various “errors can be introduced into a configuration”
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`such as a state error or an exception error based on how one or more rules are
`
`defined. EX1001, 6:43-49. For this reason, the explicit definition of “configuration
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`error” in the patent is that a configuration error occurs when “a rule or series of
`
`rules is not properly defined and produces an undesired effect” or “when a series of
`
`improperly defined rules causes a part to be in more than one state at the same
`
`time.”
`
`Contrary to the Board’s earlier finding, the claims are limited to errors
`
`internal to the configuration engine and do not deal with end user errors. Three
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`things compel this and are explained below. First, the patent explicitly states that it
`
`is limited to internal errors. Second, the only teaching of the patent is limited to
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`internal errors. Third—and even if the patent were not explicitly limited—those of
`
`skill in the art know that a “configuration error” is internal to the configurator.
`
`A. The explicit definition of configuration errors is that they are
`internal to the configurator.
`According to the patent, “the invention” of the ’766 patent “detects and
`
`analyzes configuration errors in a system for configuring products.” EX1001, 4:63-
`
`65 (emphasis added); EX2004, ¶47. The claims of the ’766 patent do not deal with
`
`some other kind of error message displayed by a configuration engine. It is limited
`
`to configuration errors in the configuration engine. The Board, in its prior decision,
`
`did not address this key teaching—which is explicitly tied to the invention rather
`
`than an embodiment. See POPR, 7. This is even more clear in view of the Figure 3,
`
`which defines the invention as a configuration tester system 300, not as the
`
`configuration engine itself. EX1001, 7:56-58. Such characterization of the
`
`invention—configuration errors are “in” the system—is definitional. Honeywell
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`Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that
`
`“the public is entitled to take the patentee at his word and the word was that the
`
`invention” was limited to particular technology).
`
`EX1001, 4:63-65 (annotated).
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`B.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Every example in the specification shows configuration errors
`internal to the configurator.
`Although the Board found the specification’s descriptions of “configuration
`
`errors” in Figure 3 not to be dispositive, they are highly relevant to the construction
`
`as they are the only examples of configuration errors in the patent. See EX1001,
`
`7:56-58. The example in connection with Figure 3 shows that the test case is not
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`testing for whether a configuration engine presents an error message to a user, but
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`rather whether the configuration engine experiences an internal configuration
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`error. Specifically, the test case is not designed to detect whether certain end user
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`input is disallowed. Id., 8:1-13. Rather, the test case is used to internally set state
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`information and determine whether the internal rule settings of the configurator are
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`correct. Accordingly, the test case of Figure 3 seeks to ensure that when PartA is
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`selected, PartB and PartC are excluded and PartD is included. Id.
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`The patented method as described in Figure 3 ensures that “the tested parts
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`are in the right state.” Id., 8:11-15. Whether an end user can select, for example,
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`PartE is not described because it’s not relevant to the question of whether the
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`configurator is properly applying its internal rules. The configuration error being
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`sought in this example is whether the complex configurator correctly includes Part
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`D but excludes PartB and PartC when PartA is selected. This is the only type of
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`configuration error taught in the patent.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Indeed, the claim limitation “configuration error” appears only five times in
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`the patent specification. Each of these citations is in the context of errors internal to
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`the configurator and not in the context of the whether an end user finds the
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`configurator’s performance to be undesirable:
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`• “[C]onfiguration errors may occur when a rule or series of rules is not
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`properly defined and produces an undesired effect, such as the
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`exclusion of a part that should be selectable.” EX1001, 1:54-57.
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`• “Configuration errors may also occur when a series of improperly
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`defined rules causes a part to be in more than one state at the same
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`time….” Id., 1:57-61.
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`• “It is therefore desirable to have an automated testing tool to locate
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`and analyze configuration errors, so that the rules may be
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`corrected.” Id., 1:65-67 (emphasis added).
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`• “The invention detects and analyzes configuration errors in a system
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`for configuring products….” Id., 2:62-65.
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`• “FIG. 3 shows an embodiment of the present invention for
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`configuration tester system 300 that includes several components for
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`detecting and analyzing configuration errors.” Id., 7:56-58.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`The prosecution history is silent as to “configuration error” and therefore
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`those of skill in the art would have known to look to the specification to determine
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`the meaning of this term.
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`C. Those of skill in the art know that configuration errors are
`internal to the configurator.
`The Declaration of Dr. Wood does not offer a construction of configuration
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`error. But Dr. Wood’s testimony does provide insight into what he understands a
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`configuration error to be—indeed, his Technology Background is instructive.
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`There, Dr. Wood describes a several examples of configuration errors—and they
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`are all internal errors.
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`Dr. Wood refers to configuration errors as problems within the
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`configurator—internal errors that should be “caught before the output of the
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`configurator was actually sent to manufacture.” EX1002, ¶41. In another example,
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`Dr. Wood discusses a $5.6 million cost in “configuration errors” caused when “a
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`product would be built and sent to the customer in a non-working or non-desired
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`state, or the manufacturing process would be unable to build the product.” Id. In
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`Dr. Wood’s own description, a configuration error is a problem that prevents the
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`configuration from working properly.
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`The Board previously found that a configuration error does not exclude “a
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`condition that occurs when a user attempts to make a choice that is prohibited by a
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`rule.” DI, 18. But this is unsupported by the evidence. Indeed, in every
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`hypothetical example put forward by Dr. Wood, the “configuration error” takes
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`place when a selection is made that causes problems in the configurator.
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`Only in Dr. Wood’s description of the asserted prior art—as impermissible
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`hindsight—does Dr. Wood describe so-called “configuration errors” in a way that
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`could implicate the claims of the ’766 patent. There, Dr. Wood identifies, in the
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`asserted prior art, what he calls a “configuration error” that is utterly unlike the
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`configuration errors of the patent and Dr. Wood’s own hypothetical examples. Id.,
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`¶68; e.g., id., ¶¶88, 123, 137, 142, 145, 150, 152, 180-181.
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`Taking Dr. Wood’s testimony on its face would have the Board perform an
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`obviousness inquiry before construing the claims. This is legal error. See Smiths
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`Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1353 (Fed. Cir. 1999) (“It
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`is well-established that the first step in any validity analysis is to construe the
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`claims of the invention to determine the subject matter for which patent protection
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`is sought.” (collecting cases)).
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`But even within these sections, Dr. Wood’s language keeps harkening back
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`to the proper construction. According to Dr. Wood, a bad result occurs “when a
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`product configurator was not able to detect a configuration error.” EX1002, ¶108
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`(emphasis added). Indeed, says Dr. Wood, a configuration error “allowed a
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`customer to create invalid product combinations.” Id. (emphasis added). These
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`bad configurations “could be released to manufacturing an invalid product,
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`resulting in real financial loss.” Id. (emphasis added). Again, those of skill—as
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`typified by Dr. Wood’s testimony—understood that a configuration error took
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`place inside the configurator and by definition involved the configurator not
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`working properly.
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`Dr. Wood correctly discusses “configuration errors” as those that need to be
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`“caught before the output of the configurator was actually sent to manufacture.”
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`Id., ¶103. And Dr. Wood also discusses how designers try to “increase the
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`robustness of their configurators” in the context of “bad configurations” in a
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`discussion of “configuration errors.” Id., ¶41.
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`Petitioner’s expert, defines configuration error in two ways. He provides a
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`variety of hypothetical examples that all conform to the Patent Owner’s proposed
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`claim construction. And he describes functionality from the asserted prior art. But
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`Dr. Wood’s testimony does not bridge these two things.
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`D. Dr. Wood’s testimony, to the extent it is reliable, supports Patent
`Owner’s claim interpretation.
`Dr. Wood admits that his declaration only explicitly discusses “configuration
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`errors” in paragraphs 40-41, 68-69, 103, 108, 123, 137, 142, 145, 150, 152, and
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`180-181. EX2005, 85:1-86:1.
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`To be clear, “configuration error” is not a secondary term that is at issue
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`because of some arcana of patent law. Rather, “configuration error” is a literal
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`claim element that appears four times in the challenged claim. EX1001, Claim
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`1.pre(i) (“A method of using a computer system to test a product configuration for
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`configuration errors”), 1.1 (“entering a test case into the computer system to
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`detect configuration errors in the product configuration”), 1.2 (“processing the
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`test case with the computer system in accordance with the at least one rule to detect
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`whether the change in the product configuration, as a result of processing the test
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`case in accordance with the at least one rule