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`
`CONFIGIT 1055
`Configit A/S v. Versata Dev. Grp.
`IPR2021-01055
`
`

`

`Page: 1
`Text Deleted
`"PRELIMINARY"
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`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
`___________________
`
`DECLARATION OF PAUL A. NAVRÁTIL IN SUPPORT OF PATENT
`S RS RR
`OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Versata EX2004
`Configit v. Versata
`IPR2021-01055
`
`2
`
`

`

`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Introduction ................................................................................................. 1
`Qualifications............................................................................................... 2
`Summary and basis of opinions.................................................................... 4
`A.
`Relevant legal standards..................................................................... 4
`B. Materials considered .......................................................................... 4
`C.
`
`The ’766 patent.................................................................................. 5 5
`D.
`Statements during prosecution ..........................................................11
`E.
`Level of ordinary skill.......................................................................11
`
`IV. Claim construction: Configuration error means an error that occurs when m construction:
`either (1) 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
`.................................................
`12
`be in more than one state at the same time. .................................................12
`
`
`Conclusion..................................................................................................17 ConclusionConclusion..................................................................................................17
`
`
`
`
`V. V.
`
`
`Page: 2
`Text Replaced
`[Old]: "4"
`[New]: "5"
`
`Text Replaced
`[Old]: "construction ...................................................................................... 12 A."
`[New]: "construction:"
`
`Text Replaced
`[Old]: ".............. 12 B. Test case means one or more sets of selections that should be made, and sets of parts and their expected states based on
`new rules, as well as rules previously included in parts relationships and product definitions. .................................................................... 17 C. User has its
`plain and ordinary meaning in view of the specification, which is limited to the person who programs the configuration
`engine. ........................................................................ 19 V. Conclusion .................................................................................................. 21"
`[New]: "................................................. 12 V. Conclusion .................................................................................................. 17"
`
`
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`Page: 3
`Text Replaced
`[Old]: "Preliminary Response (“POPR”)"
`[New]: "Response (“POR”)"
`
`Text Replaced
`[Old]: "petition"
`[New]: "Petition"
`
`Text Replaced
`[Old]: "declaration"
`[New]: "Declaration"
`
`Text Replaced
`[Old]: "Petition and the POPR."
`[New]: "Petition, Institution Decision, and the POR."
`
`Text Replaced
`[Old]: "declaration."
`[New]: "Declaration."
`
`Text Inserted
`"• W.D. Tex Civil Action No. 6:20-cv-00376-ADA. Alliance Computing III, Inc. d/b/a Surefield v. Redfin Corporation."
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`I, Paul A. Navrátil, Ph.D., declare as follows:
`
`I.
`
`Introduction
`1.
`I, Paul A. Navrátil, Ph.D., have been retained by Patent Owner,
`
`Versata Development Group, Inc., to provide my expert opinions as to certain
`
`issues in connection with its Patent Owner’s Response (“POR”) in the United
`Response (“POR”)
`
`States Patent and Trademark Office in response to a Petition for Inter Partes
`Petition
`
`Review (IPR) (“the Petition”) challenging U.S. Patent No. 6,836,766 (“the ’766
`
`patent”) filed by Configit A/S.
`
`2.
`
`Declaration
`This Declaration is made based on my personal knowledge, expertise,
`
`training, and experience, as well as on my review of the materials cited by the
`
`Petition, Institution Decision, and the POR.
`Petition, Institution Decision, and the POR. If required, I would testify competently
`
`Declaration.
`and truthfully regarding the contents of this Declaration.
`
`3.
`
`I have no financial or other commercial interest in the outcome of this
`
`IPR. My compensation for this engagement is based on the hours of professional
`
`work performed and does not depend on the opinions that I provide or on the
`
`outcome of this IPR. I am being compensated by Patent Owner at my standard
`
`consulting rate of $450 per hour plus expenses. In the past four years, I have
`
`provided testimony in the matters listed below:
`
`(cid:120)
`(cid:120)
`
`W.D. Tex Civil Action No. 6:20-cv-00376-ADA. Alliance Computing
`W.D. Tex Civil Action No. 6:20-cv-00376-ADA. Alliance Computing
`III, Inc. d/b/a Surefield v. Redfin Corporation.
`III, Inc. d/b/a Surefield v. Redfin Corporation.
`
`- 1 -
`
`4
`
`

`

`
`Page: 4
`Text Replaced
`[Old]: "declaration,"
`[New]: "Declaration,"
`
`Text Replaced
`[Old]: "declaration."
`[New]: "Declaration."
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`Harris County 55th Civil District Court No. 2019-38586. Aspen
`Energy Partners, LLC and RigMinder Inc. v. Trinidad Design &
`Manufacturing US, Inc. and Ensign Energy Services, Inc.
`
`D. Del. Civil Action No. 1:14-cv-01115-LPS-CJB. Data Engine
`Technologies LLC v. Google Inc.
`
`200th J. Dist., Travis Co., TX NO. D-1-GN-17-006229. Business
`Automation Associates, Inc. v. Versata Software, Inc.
`
`S.D. Tex. Civil Action No. 4:15-2172-MH. Digital Drilling Data
`Systems, LLC v. Petrolink Services, Inc. et al.
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`4.
`
`I have been requested to provide my expert opinions regarding certain
`
`terms contained within the ’766 patent and how a person of ordinary skill in the art
`
`(a “POSITA”) around the priority date, January 31, 2001, would have understood
`
`and interpreted those terms.
`
`5.
`
`Declaration,
`In preparing this Declaration, I have considered my own knowledge,
`
`training, and experience, as well as the materials cited by the Petition and the
`
`POPR.
`
`6.
`
`I reserve the right to respond to further comments or questions
`
`Declaration.
`regarding the IPR or POPR in order to clarify or supplement this Declaration.
`
`II. Qualifications
`7.
`I am a Research Scientist and Director of Visualization at the Texas
`
`Advanced Computing Center (“TACC”) at the University of Texas at Austin. I am
`
`also President of Navrátil Designs LLC, a technology consultancy.
`
`- 2 -
`
`5
`
`

`

`This page contains no comments
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`I earned a B.S. degree in Computer Science and a B.A. degree in the
`
`8.
`
`Plan II honors program at the University of Texas at Austin in 1999. I earned an
`
`M.S. degree and a Ph.D. degree, both in Computer Science, from the University of
`
`Texas at Austin in 2006 and 2010, respectively.
`
`9.
`
`I have over twenty-three years of software development and project
`
`management experience, including rule-based systems and system configuration.
`
`As part of my undergraduate thesis, I implemented a simulated robotic soccer team
`
`using the Venus active rule system that successfully competed in the 1998 World
`
`Cup of Robotic Soccer. From 1999 to 2001, I was a software engineer at Liaison
`
`Technology, where I co-invented the core business technology used to perform
`
`rule-based automatic extraction of data from semi-structured sources, including
`
`product webpages (U.S. Patent 6,782,505). My doctoral dissertation was on large-
`
`scale, memory-efficient ray tracing developed methods for complex and dynamic
`
`scheduling of certain data to facilitate efficient visual data analysis at petascales
`
`and beyond. Since 2007, I have worked at the Texas Advanced Computing Center,
`
`where I regularly participate in data analysis projects at extreme scales that
`
`leverage complex rules and logic. I have served as visualization technical lead for
`
`over one dozen supercomputers at TACC, and I currently serve as senior personnel
`
`for Stampede2 and Frontera, the two largest supercomputers in the portfolio of the
`
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`
`6
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`

`

`
`Page: 6
`Text Replaced
`[Old]: "Patent"
`[New]: "patent"
`
`Text Replaced
`[Old]: "’329"
`[New]: "’766"
`
`Text Replaced
`[Old]: "declaration:"
`[New]: "Declaration:"
`
`Text Inserted
`"to Gilpin 1002 Declaration of Dr. Kristin L. Wood, Ph.D. Oracle Configurator Developer 11i User’s Guide, Release 11i for Windows 95/98 and
`Windows NT 4.0, April 2000, Part No. A73280-05 (“Oracle1”) 1003"
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`U.S. National Science Foundation and among the largest supercomputers in the
`
`world.
`
`III.
`
`10. A copy of my curriculum vitae is attached as EX2002.
`
`Summary and basis of opinions
`A.
`Relevant legal standards
`11.
`I understand claims are to be given their ordinary and customary
`
`meaning to a POSITA in view of the claims, specification, and prosecution history.
`
`I also understand that Applicants can define their own claim terms in the
`
`patent
`specification, which will be used when interpreting the claims. The ’766 patent
`
`provides a number of explicit definitions, some of which are terms that appear in
`
`the claims.
`
`B. Materials considered
`12.
`In formulating my opinions, I have relied upon my training,
`
`’766
`knowledge, and experience that are relevant to the ’766 patent. Furthermore, I have
`
`considered the Petition filed in this case and specifically the following documents
`
`Declaration:
`listed below in addition to any other documents cited in this Declaration:
`
`Exhibit #
`1001
`
`10021002
`
`
`
`10031003
`
`Description
`U.S. Patent No. 6,836,766 to Gilpin
`to Gilpin
`Declaration of Dr. Kristin L. Wood, Ph.D.
`Declaration of Dr. Kristin L. Wood, Ph.D.
`Oracle Configurator Developer 11i User’s Guide, Release 11i for
`Oracle Configurator Developer 11i User’s Guide, Release 11i for
`Windows 95/98 and Windows NT 4.0, April 2000, Part No.
`Windows 95/98 and Windows NT 4.0, April 2000, Part No.
`A73280-05 (“Oracle1”)
`A73280-05 (“Oracle1”)
`
`- 4 -
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`Page: 7
`Text Inserted
`"Exhibit # Description Oracle Configurator Configuration Interface Object (CIO) Developer’s Guide, Release 11i, March 2000, Part No. A81001-03
`(“Oracle2”) 1004"
`
`Text Replaced
`[Old]: "the ’766 Patent"
`[New]: "U.S. Patent No. 6,836,766"
`
`Text Inserted
`"to Gupta Paper 2 Petition for Inter Partes Review of U.S. Patent No. 6,836,766 Paper 11 Decision Granting Institution of Inter Partes Review"
`
`Text Replaced
`[Old]: "“configuration"
`[New]: "“configurat[ion]"
`
`Text Replaced
`[Old]: "1:14–17."
`[New]: "1:14–18."
`
`Text Inserted
`"-5"
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`
`
`Exhibit #Exhibit #
`
`
`
`10041004
`
`1011
`1012
`
`Paper 2Paper 2
`
`Paper 11Paper 11
`
`
`DescriptionDDescription
`Oracle Configurator Configuration Interface Object (CIO)
`Oracle Configurator Configuration Interface Object (CIO)
`Developer’s Guide, Release 11i, March 2000, Part No. A81001-03
`Developer’s Guide, Release 11i, March 2000, Part No. A81001-03
`(“Oracle2”)
`(“Oracle2”)
`U.S. Patent No. 6,836,766
`Certified Prosecution History of U.S. Patent No. 6,836,766
`to Gupta
`U.S. Patent No. 5,825,651 to Gupta
`Petition for Inter Partes Review of U.S. Patent No. 6,836,766
`Petition for Inter Partes Review of U.S. Patent No. 6,836,766
`Decision Granting Institution of Inter Partes Review
`Decision Granting Institution of Inter Partes Review
`
`C.
`13.
`
`The ’766 patent
`The ’766 patent is about “testing the compatibility of parts included in
`
`“configurat[ion]
`a configuration.” EX1001, 1:7–10. The patent describes prior-art “configurat[ion]
`
`systems” or “configuration engines.” Id., 1:13–14. According to the patent, these
`
`prior art devices “allow a user to configure a product by interactively selecting
`
`components from among various groups based on availability and compatibility of
`
`1:14–18.
`features and options.” Id., 1:14–18.
`
`14.
`
`The configurators allow “a user to configure a product by interactively
`
`selecting components.” Id., 1:14–23. The configured “product might consist of
`
`several hundred individual parts” that might be available on multiple products. Id.,
`
`1:27–29. When engineers design the configurator, they define a complicated
`
`product structure and then rules to fill in gaps:
`
`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
`
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`Text Inserted
`"the"
`
`Text Replaced
`[Old]: "are parts included by default; • “excludes” rules, which are parts excluded by default; • “removes” rules, which are parts that were
`previously included but are now deleted;"
`[New]: "define parts to be included when a certain part is added; • “excludes” rules, which define parts to be excluded when a certain part is
`added; • “removes” rules, which define parts that were previously included but that should now be deleted when a certain part is added;"
`
`Text Replaced
`[Old]: "“requires” choice rules, which are parts that requires"
`[New]: "“requires choice” rules, which define selections that require"
`
`Text Replaced
`[Old]: "1:50."
`[New]: "1:50-51."
`
`Text Replaced
`[Old]: "-5"
`[New]: "-6"
`
`
`
`IPR2021-01055IPR2021-01055
`U.S. Patent No. 6,836,766
`U.S. Patent No. 6,836,766
`relationships which are not modeled by the product
`structure.
`
`EX1001, 1:28–33.
`
`15. After an engineer creates those descriptions and rules, a “compiler
`
`converts the product structure and the rules into” defined, computer-readable rule
`the
`
`types. Id., 1:33–40. The four types of compiled rules are:
`
`(cid:120)
`
`(cid:120)
`(cid:120)
`
`(cid:120)
`(cid:120)
`
`(cid:120)
`
`define parts to be included when a certain part
`“includes” rules, which define parts to be included when a certain part
`is added;
`is added;
`
`“excludes” rules, which define parts to be excluded when a certain
`“excludes” rules, which define parts to be excluded when a certain
`part is added;
`part is added;
`
`“removes” rules, which define parts that were previously included but
`“removes” rules, which define parts that were previously included but
`that should now be deleted when a certain part is added;
`that should now be deleted when a certain part is added; and
`
`“requires choice” rules, which define selections that require
`“requires choice” rules, which define selections that require “a choice
`among a group of parts.” Id., 1:27–50.
`
`16.
`
`The configurator, however complex, must always find each and every
`
`1:50-51.
`“part” in one and only one state. Id., 1:50-51.
`
`17. A “removes” rules is generally not present in the initial configuration
`
`but is a valid rule state once another choice has been made.
`
`18.
`
`The specification envisions that there will be “several hundred,
`
`several thousand, or even more” rules. Id., 1:41–45. The patent describes a system
`
`without a simple, linear decision tree. At the beginning of a configuration, every
`
`part is in the “selectable” state, since no choices have been made. Id. Once any
`
`6
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`"IPR2021-01055 U.S. Patent No. 6,836,766"
`
`Text Replaced
`[Old]: "Fig."
`[New]: "FIG."
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`selection is made, the configurator rules must ensure that the state of all the other
`
`parts is in one and only one state. Id., 1:34–53.
`
`19.
`
`Because the configurator is complicated, the ’766 patent teaches that
`
`“errors may be difficult to find due to the large number of rules in the model, the
`
`unexpected effects of some configuration operations, and the complex interactions
`
`between rules.” Id., 1:62–65. In particular, the patent warns of two categories of
`
`“configuration errors.”
`
`20.
`
`This is why the patent teaches a “method and apparatus for testing a
`
`system for maintaining and configuring products.” Id., 3:55–58.
`
`21.
`
`The patent characterizes the kinds of configuration errors that can be
`
`introduced to a configurator: state errors and exception errors. Id., 6:41–45.
`
`22.
`
`The first type of configuration error occurs “when a rule or series of
`
`rules is not properly defined and produces an undesired effect.” Id., 1:52–57. An
`
`example of this, according to the specification, is “the exclusion of a part that
`
`should be selectable.” Id.
`
`23.
`
`“[S]tate error[s],” like this happen when a “part is put in a state which
`
`was not intended by the user.” Id., 6:46–47. Note that “user” here is not a customer
`
`end-user but rather is a user of the debugging/programming interface. See, e.g., id.,
`
`FIG.
`FIG. 3 (302) (noting the use of a configuration tester GUI). These state errors,
`
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`

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`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`according to the ’766 patent, occur “when a rule has been accidentally omitted or
`
`written.” Id., 7:8–10.
`
`24.
`
`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. Id.,
`
`7:9–12. The configurator, however, experiences a state error when PartC is
`
`“excluded rather than selectable” when PartA and PartB are selected. Id., 7:10–13.
`
`This state error can be caused by a complex web of interrelated rules. Id., 7:19–23.
`
`It’s important to note that this is not an error that occurs when the configurator rule
`
`correctly prohibits PartC from being selected in connection with PartA and PartB.
`
`25.
`
`The second type of configuration error occurs when rules cause “a
`
`part to be in more than one state at the same time.” Id., 1:57–61. This means, for
`
`instance, that a part is simultaneously defined as “‘included’ and ‘excluded.’” Id.
`
`26.
`
`“[E]xception error[s]” like this occur when a “part is put in more than
`
`one state at the same time.” Id., 6:48–49. The paradigmatic example of this,
`
`according to the ’766 patent, is “PartA includes PartB” and “PartB excludes
`
`PartA.” Id., 7:39–42. So here, for example, one rule will set “PartA” to “selected”
`
`and “PartB” to “include.” Another, simultaneous rule will set “PartA” to
`
`“exclude.” Id., 7:39–45. This is an exception error. Most exception errors are more
`
`complicated than this straightforward example. Id., 7:46–49.
`
`- 8 -
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`Text Replaced
`[Old]: "“conflicts"
`[New]: "“conflict[]"
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`Text Replaced
`[Old]: "Fig.3A"
`[New]: "FIG. 3A"
`
`Text Inserted
`"on"
`
`
`IPR2021-01055
`U.S. Patent No. 6,836,766
`The ’766 patent then describes its innovative approach to debugging a
`
`27.
`
`configurator. In the inventive debugging system, the “user provides test cases that
`
`select at least one part to include in the product configuration.” Id., 2:7–11. Then,
`
`the “configuration tester processes the rule to determine whether” the choices in
`
`the test case “conflict[] with the plurality of parts” in the configurator. Id. There
`“conflict[]
`
`are a number of different embodiments of the tester described, but they all select
`
`parts and determine whether there is an internal error in the configurator. This is
`
`designed to be used by the engineer who is in charge of designing and
`
`implementing the configurator and not by end users.
`
`28.
`
`In the claimed embodiment, the configuration tester includes a
`
`FIG. 3A
`“listener” or “driver and listener.” Id., 2:27–32, FIG. 3A (316). This component
`
`“detects state change events that result in the system being in the initialized part
`
`state.” Id., 2:27–34.
`
`29.
`
`To display the part state to the engineer, the ’766 patent discloses an
`
`“explainer.” Id., 2:39–42. The explainer “generates an explanation for the part
`
`state.” Id. This allows the debugging user to pinpoint where rule execution caused
`
`a disallowed state: “[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 require[d] choice rule cannot
`
`on
`be satisfied, or on a look ahead process.” Id., 2:43–46.
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`

`IPR2021-01055
`U.S. Patent No. 6,836,766
`30. As the patent says, “[t]he invention detects and analyzes configuration
`“[t[[ ]t he
`
`errors in a system for configuring products.” EX1001, 4:62–65 (emphasis added).
`4:62–65
`
`This is not directed to analyzing errors received by the user of a configuration
`
`product.
`
`31. According to the specification of the ’766 patent, the system and
`
`FIG. 3
`method concerns a “Configuration Tester GUI.” EX1001, FIG. 3 (302).
`
`
`Page: 12
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`[Old]: "“the"
`[New]: "“[t]he"
`
`Text Replaced
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`[New]: "4:62–65"
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`Text Replaced
`[Old]: "Fig.3"
`[New]: "FIG. 3"
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`Text Replaced
`[Old]: "Fig."
`[New]: "FIG."
`
`Text Replaced
`[Old]: "GUI.”"
`[New]: "graphical user interface (CTGUI).”"
`
`
`FIG.
`EX1001, FIG. 3 (annotated).
`
`32.
`
`Figure 3 of the ’766 patent includes a specific test case embodiment
`
`graphical user interface (CTGUI).”
`for use with the “Configuration Tester graphical user interface (CTGUI).”
`
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`Page: 13
`Text Replaced
`[Old]: "made statements about “test case.” Specifically, the applicant’s attorney stated that the “specification provides illustrative support for the
`term ‘test case.’” EX1011, 193. It continued “independent claims recite a specific type of test case, i.e. ‘a test case... to detect configuration errors
`in the product configuration.’” Id. The Petition quotes from the prosecution history that “the present invention is limited by the claims and not by
`specific embodiments set forth in the description.” Id."
`[New]: "did not make any statements about “configuration error” or any issue that bears on the subject of my testimony."
`
`Text Replaced
`[Old]: "it was intended to limit the definition"
`[New]: "anything in the prosecution history limited the definition of “configuration error”"
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`EX1001, 7:59–8:5. In this example, the test case specifies that ProductA and PartA
`
`are selected. Id., 8:6–7. When the test case is run, it ensures that PartB and PartC
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`are excluded and that PartD is included. Id., 8:8–9. In response to the system
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`processing the test case, the “configuration tester modules [] run each test case.”
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`Id., 8:10–15. “If a test fails,” the configuration determines the state problem. Id.
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`Statements during prosecution
`D.
`did not make any
`33. During prosecution, the applicant’s attorney did not make any
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`statements about “configuration error” or any issue that bears on the subject of my
`statements about “configuration error” or any issue that bears on the subject of my
`
`testimony.
`testimony.
`
`34.
`
`Those of skill reading this statement would not understand that
`
`anything in the prosecution history limited the definition of “configuration error”
`anything in the prosecution history limited the definition of “configuration error”
`
`in the specification.
`
`E.
`35.
`
`Level of ordinary skill
`I have been asked to assume that the level of ordinary skill in the art is
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`a “person with a Bachelor’s degree in Computer Science, Computer or Electrical
`
`Engineering, Engineering Science, an engineering major with a significant
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`computational component, or a similar discipline, or with at least two years of
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`research or experience in configurable systems including testing.”
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`36.
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`I have not independently formed an opinion as to whether this is the
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`appropriate level of skill in the art for the ’766 patent.
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`"A."
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`Text Deleted
`"For the reasons cited below, it is my opinion that a POSITA would understand these terms according to the supplied constructions."
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`Text Replaced
`[Old]: "construction"
`[New]: "construction:"
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`Text Deleted
`"“configuration error” and “test case” are defined by the specification."
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`Text Deleted
`"38. I have examined the ’766 patent and have concluded that the terms"
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`Text Inserted
`"38. I have examined the ’766 patent and have concluded that the terms"
`
`Text Inserted
`"“configuration error” is defined by the specification."
`
`Text Inserted
`"For the reasons cited below, it is my opinion that a POSITA would understand these terms according to the supplied constructions."
`
`Text Replaced
`[Old]: "those of skill"
`[New]: "a POSITA"
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`Text Replaced
`[Old]: "series"
`[New]: "[series"
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`Text Replaced
`[Old]: "rules"
`[New]: "rules]"
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`But I do not consider this level of skill to be unreasonable based on
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`37.
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`the ’766 patent disclosure and have applied that level of skill in rendering my
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`opinions.
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`IV. Claim construction: Configuration error means an error that occurs
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`construction:: CCn:n:::n:n:nn: C
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`when either (1) a rule or series of rules is not properly defined and
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`ll
`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.
`38.
`I have examined the ’766 patent and have concluded that the terms
`38.
`I have examined the ’766 patent and have concluded that the terms
`
`“configuration error” is defined by the specification. For the reasons cited below, it
`“configuration error” is defined by the specification. For the reasons cited below, it
`
`is my opinion that a POSITA would understand these terms according to the
`is my opinion that a POSITA would understand these terms according to the
`
`supplied constructions.
`supplied constructions.
`
`39.
`
`a POSITA
`It is my opinion that a POSITA would have understood the ’766
`
`patent defines the term “configuration error” to mean an error that occurs when
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`either (1) a rule or series of rules is not properly defined and produces an undesired
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`effect; or (2) a series of improperly defined rules causes a part to be in more than
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`one state at the same time.
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`40.
`
`The invention background describes these two types of configuration
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`errors: “configuration 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 exclusion of a part
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`that should be selectable[;]” and “[c]onfiguration errors may also occur when a
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`[series
`rules]
`[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.’”
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`EX1001, 1:54–61. The detailed description elaborates on these contemplated error
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`types: “There are many ways that errors can be introduced into a configuration,
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`however, the effects of these errors can be categorized in 2 groups: 1) A part is put
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`in a state which was not intended by the user (state error), or 2) A part is put in
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`more than one state at the same time (exception error).” EX1001, 6:43–49.
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`41.
`
`The specification further describes the state error type:
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`State Errors
`The simplest types of state errors are caused when a rule
`has been accidentally omitted or written. For example,
`the user may select PartA and PartB, and then note that
`‘PartC’ is excluded rather than selectable. In the simplest
`case, this may be due to the following rule in the model:
`PartA Excludes PartC
`Or, there may be a rule:
`PartA Requires Choice (min/max=1/1) {PartB, PartC}
`Here, selecting PartA implies that either PartB or PartC
`must be selected. Selecting PartB causes configuration
`engine 200 to infer that PartC must be Excluded.
`Alternatively, multiple rules may cause a state change,
`for example:
`PartA Includes PartX
`PartX Excludes PartC
`Here, selecting PartA causes PartX to be included, which
`then causes PartC to be excluded.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`State errors can also be caused by the look-ahead
`process. Suppose the following rules are written:
`ProductA Excludes PartA
`ProductB Includes PartB
`ProductB, PartB Excludes PartA
`ProductC RequiresChoice (min/max=1/1) PartA, PartC
`ProductC Includes PartC
`Even if the user has not made any selections, PartA will
`be excluded by the look ahead process for each of
`products A, B, and C. Detecting state changes that are
`caused by the look-ahead process is particularly difficult
`because for each product there may be a different rule
`chain or exception error that causes the state error.
`
`EX1001, 7:8–36.
`
`42.
`
`The specification also further describes the exception error type:
`
`Exception Errors
`Sometimes, rules may be inadvertently written that cause
`a conflicting state exception. The simplest case can be
`summed up by the rules:
`PartA includes PartB
`PartB excludes PartA
`If PartA is selected, then PartB will be Included. But then
`the second rule causes PartA to be excluded. This
`conflicting state cannot be reconciled, and an exception is
`raised.
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`[New]: "patent"
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`[New]: "patent."
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`Text Replaced
`[Old]: "Patent"
`[New]: "patent"
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Most exception conditions are more complex than this
`one. For example, selecting a part that is in a requires
`choice rule may cause the requires choice rule to be
`unsatisfiable as follows:
`PartA requires choice (min/max=1/1) {PartB, Part C}
`PartB includes PartC
`In the preceding rules, if PartA is selected, selecting
`PartB will cause an exception error because the requires
`choice rule will not be satisfiable.
`
`EX1001, 7:37–54.
`
`43. A POSITA would understand that such rules are written by a
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`configuration engineer implementing a product definition system as opposed to an
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`end-user using a product definition to configure a product within such a system. As
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`part of the product definition process, the configuration engineer periodically tests
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`whether the implemented system reflects the desired modeling intent, namely, that
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`supported product selections can be made and unsupported product selections
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`patent
`cannot. This is the purpose to which the invention embodied in ’766 patent is
`
`targeted.
`
`44.
`
`This understanding of a POSITA is further confirmed by the
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`description of related configuration and maintenance systems as described in the
`
`patent.
`patent
`related art within the ’766 patent. The ’766 patent includes reference to U.S. Patent
`
`No. 5,825,651 entitled “Method and Apparatus For Maintaining and Configuring
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Systems” (the “’651 patent”), “which is assigned to the same assignee as the
`“’651 patent”),
`
`present invention, and is hereby incorporated by reference.” EX1001, 1:17–23.
`
`The ’651 patent describes a maintenance and configuration system that contains a
`patent
`
`maintenance system “used to define a product” and a configuration system “used
`
`to configure a system using a definition created by the maintenance system.”
`
`patent
`EX1012, 2:38-40, 2:50–51. The ’766 patent contemplates this two-phase operation
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`by distinguishing between maintenance environment and configuration
`
`environment:
`
`
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`[Old]: "’651 Patent),"
`[New]: "“’651 patent”),"
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`[Old]: "Patent"
`[New]: "patent"
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`Text Replaced
`[Old]: "Patent"
`[New]: "patent"
`
`
`Configuration engine 200 is used to configure a product
`using a definition created by
`the maintenance
`environment 202. Configuration environment 204
`ensures that the current configuration state is always
`valid. The user can select and unselect parts in any order.
`When
`user
`input
`is
`received,
`product
`specification/verification 212 validates the input based on
`the current state of the configuration. In addition, the
`product
`specification/verification
`212
`identifies
`selections that could cause a valid configuration to
`become invalid. Product specification/verification 212
`r