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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CONFIGIT A/S,
`Petitioner
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`v.
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`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
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`Case IPR2021-01055
`Patent No. 6,836,766 B1
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`PETITIONER’S REPLY
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
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` 
`
`TABLE OF CONTENTS
`
`CLAIMS 1-5 & 9-19 ARE UNPATENTABLE .............................................. 1 
`  All Challenged Claims are Obvious Under the Board’s Original
`Construction on Institution ......................................................................... 2 
`  Versata’s Limiting Construction For “Configuration Error in the Product
`Configuration” Remains Incorrect ............................................................. 2 
`  The ’766 Patent Does Not Limit “Configuration Error” to “Internal
`Errors” ................................................................................................. 3 
`  The ’766 Specification Shows Errors That Are Not “Internal” to the
`Configurator ........................................................................................ 4 
`  A POSITA Would Have Known That Configuration Errors Are Not
`Limited to “Internal” Errors ................................................................ 6 
`  Versata’s Distinction of “Internal Errors” vs. “User Errors” Is Not
`Reflected in the Claim Language ....................................................... 8 
`  All Challenged Claims are Also Obvious Under Versata’s Limiting
`Construction .............................................................................................. 10 
`  MUCH OF VERSATA’S POR REPEATS ITS POPR AND IS LARGELY
`UNSUPPORTED ATTORNEY ARGUMENT ............................................ 16 
`  VERSATA MISCHARACTERIZES DR. WOOD’S TESTIMONY ........... 16 
`  ORACLE1 AND ORACLE2 ARE PRIOR ART .......................................... 20 
`CONCLUSION .............................................................................................. 22 
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`
`1001
`1002
`1003
`
`1004
`
`EXHIBITS
`
`U.S. Patent No. 6,836,766 to Gilpin (“the ’766 patent”)
`Declaration of Dr. Kristin L. Wood, Ph.D. (with Curriculum Vitae)
`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”)
`Oracle Configurator Configuration Interface Object (CIO) Developer’s
`Guide, Release 11i, March 2000, Part No. A81001-03 (“Oracle2”)
`Beologic A/S Reference Guide for the beologic salesPLUS Product
`Configurator, C language API, Version 2.0, 1995 (“SalesPlus”)
`Bei Yu and H. J. Skovgaard, “A configuration tool to increase product
`competitiveness,” in IEEE Intelligent Systems and their Applications, vol.
`13, no. 4, pp. 34-41, July-Aug. 1998, doi: 10.1109/5254.708431; print
`ISSN: 1094-7167, electronic ISSN: 2374-9423 (“Yu”)
`1007 Atif M. Memon, Martha E. Pollack, Mary Lou Soffa, “Automated Test
`Oracles for GUIs”, Proceedings of the Eighth International Symposium on
`the Foundation of Software Engineering (FSE-8), San Diego, CA, Nov. 6,
`2000, https://dl.acm.org/doi/proceedings/10.1145/355045, ISBN: 978-1-
`58113-205-2 (“Memon”)
`Declaration of Ms. Tina Brand
`Declaration of Mr. Andrew Wolfe
`Declaration of Mr. Jacob Munford
`File Wrapper of the ’766 Patent
`U.S. Patent No. 5,825,651 to Gupta
`File Wrapper of U.S. Patent No. 5,825,651
`Docket in Versata Software Inc. et al., v. Configit A/S., No. 20-CV-9019
`(C.D. Cal.)
`
`1005
`
`1006
`
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`
`
`ii
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`

`

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`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`
`Docket in Versata Development Group, Inc. et al v. Ford Motor Co., No.
`15-cv-00316 (E.D. Tex.).
`Oracle Applications – Product Update Notes, Release 11i, May 2000, Part
`No. A85297-01
`https://web.archive.org/web/20001019084740/http://docs.oracle.com:80/
`Web Site Capture
`https://web.archive.org/web/20001019040314fw_/http://docs.oracle.com/
`help_media.html Web Site Capture
`https://web.archive.org/web/20001119103400/http://store.oracle.com/
`cec/cstage?eccookie=&ecaction=ecpassthru&template=combined_decsec
`tview_doc.en.htm Web Site Capture
`Declaration of Marianne Tind
`Configit Formal Notice of Stipulation
`U.S. Patent No. 5,579,476 to Cheng
`Ram Chillarege, “Software Testing Best Practices,” IBM Technical Report
`RC 21457, April 26, 1999
`Judith Bachant and John McDermott, “R1 Revisited,” AI Magazine, 5 (3),
`21–32, 1984.
`Erich Gamma, Richard Helm, Ralph Johnson, John Vlissides, “Design
`Patterns: Elements of Reusable Object-Oriented Software,” Addison-
`Wesley, 1995.
`Arnold van de Brug, Judith Bachant, and John McDermott, “The taming
`of R1,” IEEE Computer Architecture Letters 1.03 (1986): 33-39.
`Oracle SellingPoint CompanionBuilder Online Documentation (extracts)
`B. M. Kramer, “Knowledge-based configuration of computer systems
`using hierarchical partial choice,” Proceedings of the Third International
`Conference on Tools for Artificial Intelligence - TAI 91, 1991, pp. 368-
`375, doi: 10.1109/TAI.1991.167117.
`
`iii
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`1028
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`
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`
`1029
`
`John McDermott, “R1: A Rule-based Configurator of Computer Systems,”
`Carnegie-Mellon University Technical Report CMU-CS-80-119, April,
`1980.
`1030 William F. Wright, Rodney Smith, Ryan Jesser, Matt Stupeck, “Successful
`Implementation and Use of Enterprise Software: Compaq Computer
`Corporation,” University of California at Irvine, Case Study, Sept. 17,
`1998
`1031 W. E. Howden, “Theoretical and Empirical Studies of Program Testing,”
`in IEEE Transactions on Software Engineering, vol. SE-4, no. 4, pp. 293-
`298, July 1978, doi: 10.1109/TSE.1978.231514.
`S. Marcus, J. Stout, J., & J. McDermott. VT: An Expert Elevator Designer
`That Uses Knowledge-Based Backtracking. AI Magazine, 9(1), 95,
`(1988). https://doi.org/10.1609/aimag.v9i1.664
`E.H. Groundwater, L.A. Miller, and S.M. Mirsky, “Guidelines for the
`Verification and Validation of Expert System Software and Conventional
`Software,” SAIC-95/1028, Vol. 3, 1995.
`Uma G. Gupta, “Automatic tools for testing expert systems,” Commun.
`ACM
`41,
`5es
`(May
`1998),
`179–184.
`DOI:
`https://doi.org/10.1145/276404.276409
`Pei-Lei Tu, Jen-Yao Chung and C. N. Nikolaou, “An intelligent approach
`to verification and testing of the configurator,” Proceedings of the Second
`Symposium on Assessment of Quality Software Development Tools,
`1992, pp. 151-162, doi: 10.1109/AQSDT.1992.205849.
`S. M. Fohn, J. S. Liau, A. R. Greef, R. E. Young, P. J. O’Grady,
`“Configuring computer systems through constraint-based modeling and
`interactive constraint satisfaction,” Computers in Industry, Volume 27,
`Issue 1, 1995, Pages 3-21, ISSN 0166-3615.
`Daniel Mailharro. 1998. “A classification and constraint-based framework
`for configuration.” Artif. Intell. Eng. Des. Anal. Manuf. 12, 4 (September
`1998), 383–397. DOI: https://doi.org/10.1017/S0890060498124101
`J. R. Wright, Weixelbaum, E. S., Vesonder, G. T., Brown, K. E., Palmer,
`S. R., Berman, J. I., & H. H. Moore, “A Knowledge-Based Configurator
`that Supports Sales, Engineering, and Manufacturing at AT&T Network
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
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`1038
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`iv
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`
`69
`
`(1993),
`
`14(3),
`Magazine,”
`AI
`Systems.
`https://doi.org/10.1609/aimag.v14i3.1055
`E. T. Barr, M. Harman, P. McMinn, M. Shahbaz and S. Yoo, “The Oracle
`Problem in Software Testing: A Survey,” in IEEE Transactions on
`Software Engineering, vol. 41, no. 5, pp. 507-525, 1 May 2015, doi:
`10.1109/TSE.2014.2372785.
`Dirk Riehle, “The Event Notification Pattern – Integrating Implicit
`Invocation with Object-Orientation,” Theory and Practice of Object
`Systems, vol. 2, no. 1, pp.43-52, 1996.
`https://web.archive.org/web/20000408210140/http://www.selectica.com/
`(Web Site Capture)
`U.S. Patent No. 5,452,239 to Dai
`https://web.archive.org/web/20000829052529/http://www.calico.com/
`products/eadvisor.shtml (Web Site Capture)
`Virginia E. Barker and Dennis E. O’Connor, “Expert Systems for
`Configuration at Digital: XCON and Beyond,” in Communications of the
`ACM, March 1989, Vol. 32, No. 3 ISSN:0001-0782/89/0300-0298.
`SAP AG, Variant Configuration (LO-VC) Release 4.6C Manual, 2000.
`John McDermott, “R1: The Formative Years,” AI Magazine, vol. 2, no.2,
`pp. 21-29, 1981.
`Rina Dechter and Itay Meiri, “Experimental Evaluation of Preprocessing
`Algorithms for Constraint Satisfaction Problems,” in Artificial Intelligence
`vol. 68, pp. 211-241, February 1992, SSDI:0004-3702 (93) E0057-S
`Rina Dechter and Daniel Frost, “Backtracking Algorithms for Constraint
`Satisfaction Problems,” Department of Information and Computer
`Science, University of California Irvine, September 17, 1999
`Bill Venners, “Object finalization and cleanup,” June 1, 1998 (JavaWorld)
`(available
`at
`https://www.infoworld.com/article/2076697
`/object-
`finalization-and-cleanup.html)
`Juha Tiihonen and Timo Soininen, “Product Configurators – Information
`System Support for Configurable Products,” TAI Research Centre and
`
`doi:
`
`1039
`
`1040
`
`1041
`
`1042
`1043
`
`1044
`
`1045
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
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`
`v
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`
`1051
`
`1052
`1053
`1054
`1055
`
`Laboratory of Information Processing Science Product Data Management
`Group, Helsinki University of Technology, 1997.
`Concept Guide for the Beologic salesPLUS Product Configurator, Version
`2.0, November 1995
`Declaration of Jeffrey Shneidman
`(SUBJECT TO PROTECTIVE ORDER) Sealed Declaration
`(SUBJECT TO PROTECTIVE ORDER) Sealed Declaration Exs. 1-7
`PDF Comparison of “Declaration of Paul A. Navratil In Support of Patent
`Owner’s Response” (Ex. 2004) with “Declaration of Paul A. Navratil In
`Support of Patent Owner’s Preliminary Response” (Ex. 2001)
`
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`vi
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`Versata claims that “[t]his case turns on [the claim construction of]
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`‘configuration error in the product configuration.’” POR at 1. Not so. Versata
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`makes no argument that its claims are patentable under the construction already
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`adopted by the Board. Versata’s only argument relies on the Board changing its
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`construction, but even then, Versata is still wrong because the prior art also teaches
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`this claim term under Versata’s overly narrow proposal. As such, for the reasons set
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`forth in the Petition and this Reply, claims 1-5 and 9-19 of U.S. Patent No. 6,836,766
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`(“the ’766 patent”) are unpatentable.
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` CLAIMS 1-5 & 9-19 ARE UNPATENTABLE
`In its POPR, Versata argued that “configuration error means either (1) the
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`condition that occurs when ‘a rule or series of rules is not properly defined and
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`produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a
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`part to be in more than one state at the same time.’” POPR, 10. On top of this
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`proposed definition, Versata also argued that the term “configuration error” is further
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`limited to errors that were “internal” to the configuration engine. Id., 10, 12.
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`In its ID, the Board adopted Versata’s proposed construction for configuration
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`error, but rejected Versata’s additional requirement that configuration errors must be
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`internal. ID, 8 (“the construction does not say anything about an error being
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`‘internal’ to the configuration engine.”) As laid out below, the claims at issue are
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`invalid whether they are limited to internal errors or not.
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`
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`1
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
` All Challenged Claims are Obvious Under the Board’s
`Original Construction on Institution
`All of the arguments in the Patent Owner Response (“POR”) are dependent
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`on the Board changing its construction to add the requirement that configuration
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`errors be exclusively internal to the configuration engine.
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`If the Board adopts the same construction and reasoning as given in its
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`institution decision, ID 7-8 & 18-28, Versata makes no arguments for the
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`patentability of its claims. Accordingly, if the construction of this term remains the
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`same, the Board should find all challenged claims unpatentable for the reasons given
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`in Configit’s Petition and the Board’s Institution Decision, id.
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` Versata’s Limiting Construction For “Configuration Error in
`the Product Configuration” Remains Incorrect
`Versata’s proposed limitation—which the Board has already rejected once
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`
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`and should reject again—incorrectly limits configuration errors to “errors [that] are
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`internal to the configuration engine itself.” POR, 1 (bold italic emphasis in
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`Versata’s POR; underlining emphasis added). In its own words, Versata’s main
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`argument in its POR is that “the claims are limited to errors internal to the
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`configuration engine and do not deal with end user errors.” POR, 12 (emphasis in
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`original). But the claims have no such limitation. The words “internal” or “engine”
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`or “end user” do not appear in the claim terms, and there is no basis to graft those
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`limitations onto the claims.
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`Versata argues that “three things compel” its further limited construction.
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`POR, 12, but each of these “three things” is easily debunked.
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`
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`The ’766 Patent Does Not Limit “Configuration
`Error” to “Internal Errors”
`First, Versata argues that “the patent explicitly states that it is limited to
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`internal errors.” POR, 12-13. That is incorrect. The word “internal” does not appear
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`in the specification in the context of an error. See Ex. 1001. Versata takes a sentence
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`from the specification that “[t]he invention detects and analyzes configuration errors
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`in a system for configuring products such as described in the [5,825,]651 patent” to
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`argue that this sentence somehow limits the patent claims to “configuration errors in
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`the configuration engine.” POR, 13 (emphasis in Versata’s POR). This is a non-
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`sequitur.1
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`Further, Versata’s “engine” argument is without merit: Versata incorrectly
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`argues that “a ‘configuration error’ is an error that occurs within the configuration
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`1 Not only is this a non-sequitur, but to the extent the ’651 patent is relevant, the only
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`uses of “error” in the ’651 patent are in the context of a user selecting a part, e.g.,:
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`At step 902, the user selects item n (e.g., part) preferably using a GUI
`screen. At step 904 (i.e., “n selectable?”), a determination is made whether
`the item is selectable. . . . If it is not, configuration system 212 determines
`that the item is not selectable by the user and raises an error at step 922.
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`Ex. 1012, 12:16-22 (emphasis added).
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`3
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`

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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`engine as a result of changes made to the configuration engine.” POR, 1 (emphasis
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`
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`in original). That is not correct. The word “engine” does not appear in the claims.
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`Instead, the claims require “detect[ing] whether the change in the product
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`configuration . . . produced a configuration error in the product configuration.” Ex.
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`1001, 12:43-47. In the ’766 patent claims, it is the product configuration that
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`changes, not the product configuration engine.
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`Nor does Figure 3 of the ’766 patent add any definitional limitation to the
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`patent claims, notwithstanding Versata’s assertion otherwise. POR, 13. In patent
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`law, “the name of the game is the claim,” In re Hiniker Co., 150 F.3d 1362, 1369
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`(Fed. Cir. 1998), and “courts must not import limitations . . . from the specification
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`. . . unless the patentee has demonstrated a clear intention to limit the claim scope
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`using words or expressions of manifest execution or restriction,” Trading Techs.
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`Int’l v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010). Here, there has been no
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`such demonstrated clear intention to limit the claim scope by reading in the
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`limitations “internal” or “engine” into the claims.
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`
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`The ’766 Specification Shows Errors That Are Not
`“Internal” to the Configurator
`Second, Versata incorrectly claims that “every example in the specification
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`shows configuration errors internal to the configurator.” POR, 14-16. In fact, the
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`very first example of a configuration error (Ex. 1001, 7:7-14) is not “internal” to the
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`configurator at all:
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`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
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`In this example, the error is described in terms of what “the user” would “note”:
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`PartC should have been selectable, but the rule “PartA Excludes PartC” caused PartC
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`to be excluded.
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`Whether this example is even a configuration error depends on something
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`completely external to the configurator: whether the exclusion of PartC is an
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`“undesired effect.” There is nothing intrinsically erroneous with the rule “PartA
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`Excludes PartC.” While “PartA Excludes PartC” may be a perfectly correct and
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`intended rule in one configuration, it may be a “rule [that] is not properly defined
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`and produces an undesired effect” in another configuration (such as the situation
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`described at Ex. 1001, 7:7-14). Nothing in the claim language restricts the claimed
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`methods from being able to detect such a configuration error, even though Versata
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`now seeks to disallow such detection. See, e.g., POR, 14 (erroneously arguing that
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`“the test case is not designed to detect whether certain end user input is disallowed”
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`and incorrectly arguing that “[w]hether an end user can select [a part is] not relevant
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`to the question of whether the configurator is properly applying its internal rules. . . .
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`This is the only type of configuration error taught in the patent.”) (emphasis in POR).
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`As shown above, the ’766 patent specification itself contradicts Versata’s argument:
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`5
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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`in the example quoted above, whether PartC is selectable is entirely relevant to being
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`
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`able to detecting the described state error.
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`
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`Versata’s argument that a configuration error is “not . . . whether an end user
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`finds the configurator’s performance to be undesirable,” POR, 15, is simply wrong.
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`To the contrary, the ’766 patent itself describes the counter-example above as the
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`“simplest case” of when “configuration errors may occur when a rule or series of
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`rules is not properly defined and produces an undesired effect, such as the exclusion
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`of a part that should be selectable.” Ex. 1001, 7:12, 1:54-57. Versata’s further
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`limitations would exclude the simplest types of configuration errors that are
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`described by the patent. See SanDisk Corp. v. Memorex Prod., Inc., 415 F.3d 1278,
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`1285 (Fed. Cir. 2005) (“A claim construction that excludes a preferred embodiment,
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`moreover, ‘is rarely, if ever, correct.’”).
`
`
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`A POSITA Would Have Known That Configuration
`Errors Are Not Limited to “Internal” Errors
`Third, Versata incorrectly claims that a POSITA would “know [sic: have
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`known] that a ‘configuration error’ is internal to the configurator.” POR, 13, 16-18.
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`Versata offers no expert testimony of its own as to what a POSITA would
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`have understood at the critical date of the ’766 Patent. Versata does not rely on its
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`expert Dr. Navratil to support its limiting construction. After the POR’s “Summary
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`of the Patent” section that was copied directly from the POPR (Compare POPR, 1-
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`6
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`

`

`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`9 §§I.A-I.D with POR 2-10 §§1A-1D), Versata all but ignores its expert.2 Indeed,
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`
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`from pages 14-40 of its POR, Versata does not reference its expert even once,
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`including in the critical section § IV.C, titled “Those of skill in the art know that
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`configuration errors are internal to the configurator.” In sum, Versata provides no
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`affirmative expert support for its narrow construction.
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`Instead, Versata attacks Configit’s expert, Dr. Wood, incorrectly claiming that
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`Dr. Wood’s testimony shows that “[t]hose of skill in the art know that configuration
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`errors are internal to the configurator.” POR, 16. Dr. Wood does not use the word
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`“internal” once in his declaration. See Ex. 1002. Nor was Dr. Wood asked about
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`“internal” errors in his deposition. See Ex. 2005. Versata’s allegation that “Dr.
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`2 Versata’s expert declaration in support of POR is almost a strict subset of the
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`declaration in support of POPR. See Ex. 1055 (comparison). The POR declaration
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`adds a single paragraph that is uncited in the POR, and that opines without support
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`that based on Ex. 1001, 4:63-65, “[t]hose of skill would have understood that this
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`explicit description in the patent limits configuration errors to those that are in the
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`configurator.” Ex. 2004 ¶45. Configit addressed this argument in §I.B.1, supra.
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`Even had this paragraph been cited in the POR, this cursory unsupported opinion
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`would have been entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc.,
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`849 F.3d 1034, 1041 (Fed. Cir. 2017) (PTAB can discount uncorroborated opinion).
`
`
`
`7
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`

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`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`Wood describes a several [sic] examples of configuration errors—and they are all
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`
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`internal errors” is not a correct summary of Dr. Wood’s testimony.3 Dr. Wood
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`testified that there were many types of configuration errors. See Ex. 1002 ¶¶ 40-41
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`(Dr. Wood describing “configuration errors” with examples from Ex. 1046, 1050,
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`1006) & ¶¶ 48-49 (Dr. Wood discussing error types and citing Ex. 1033 at 53, 85);
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`Ex. 2005 at 59:22-60:5 (“Throughout my Declaration I provide context of other
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`configuration errors that would be understood by a person of ordinary skill in the art
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`at the time of the patent. They can include syntax types of errors, semantic errors,
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`logical errors, logical rule errors, as examples.”). In short, Dr. Wood’s testimony
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`does not support Versata’s limitation argument.
`
`
`
`Versata’s Distinction of “Internal Errors” vs.
`“User Errors” Is Not Reflected in the Claim
`Language
`Finally, Versata’s argument that “the claims are limited to errors internal to
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`the configuration engine and do not deal with end user errors” (POR, 12) is wrong.
`
`The claims say no such thing. Dr. Navratil’s testimony shows the fallacy of making
`
`such a distinction, as Dr. Navratil describes detecting “internal” errors by
`
`
`3 Versata repeatedly mischaracterizes Dr. Wood’s testimony throughout the POR.
`
`These attacks are collected and rebutted in Section III, infra.
`
`
`
`8
`
`

`

`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`“assum[ing] the role of a configuration user,” i.e., determining what an end user
`
`
`
`would discover:
`
`A configuration engineer can assume the role of a configuration user
`during the product model testing process in order to validate that a
`given product model does not contain the configuration errors
`contemplated by the ’766 Patent (i.e., caused by improperly defined
`rules). Such errors are not indicated by whether the configuration user
`can specify any desired product configuration in the configuration
`environment, but rather whether the specified product configuration
`produces “an undesired effect” or “results in more than one state”
`according to the intent of the configuration engineer who created the
`product configuration in the maintenance environment.
`
`Ex. 2001 ¶48 (emphasis in original). Under Versata’s “only internal” limitation,
`
`whether the ’766 Patent claims are infringed would apparently depend on whether
`
`the person running the test case is a “configuration engineer” or not, something
`
`completely exogenous to the claims. The challenged claims make no distinction
`
`between a “configuration environment” vs. “maintenance environment” or the job
`
`title of the person executing the method. See also Ex. 2005, 58:6-11 (Dr. Wood
`
`noting that “there’s not a limitation on user” in the challenged patent claims). See
`
`also ID, 19 (“The word ‘engineer’ appears nowhere in the Specification of the ’766
`
`Patent, and the distinction between types of users is nowhere explicitly disclosed.”)
`
`
`
`9
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
` All Challenged Claims are Also Obvious Under
`Versata’s Limiting Construction
`Even if the Board were to adopt Versata’s incorrect limitation for
`
`“configuration error in the product configuration,” Oracle1 provides Versata’s
`
`narrow construction as well. Versata is wrong when it incorrectly claims:
`
`Oracle1—the reference on which Petitioner relies for this claim
`element—simply prevents an end-user from making a part selection
`excluded by a properly functioning configuration engine. But nothing
`in Oracle 1 teaches or remotely suggests detecting errors within the
`configuration engine itself—i.e., detecting an improperly functioning
`configuration engine as described in the ’766 patent.
`
`POR, 2 (emphasis in original). In fact, Oracle1 explicitly teaches detecting errors
`
`within the configuration engine itself.
`
`First, Versata is wrong that Oracle1 “simply prevents an end-user from
`
`making a part selection excluded by a properly functioning configuration engine.”
`
`POR, 2.4 Oracle1 describes itself as a “Developer” tool for use by a configuration
`
`developer who is building and deploying a product configurator. Ex. 1003, 18
`
`(“Building a Configuration with Oracle Configurator Developer. You can use
`
`
`4 All of Versata’s incorrect characterizations are unsupported attorney arguments:
`
`Versata’s expert Dr. Navratil does not opine at all about Oracle1 or Oracle2 (or
`
`any of the other art at issue in this trial) in his declaration. See Ex. 2004.
`
`
`
`10
`
`

`

`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`Oracle Configurator Developer to build the Oracle Configurator Model and
`
`
`
`Configuration Rules directly from your product and business requirements”); Ex.
`
`2005, 57:20-58:5 (Dr. Wood testifying that a user of Oracle1 “can be a configuration
`
`developer or a configuration engineer or more generally a user creating a
`
`configuration”).
`
`Oracle1 teaches detecting errors within the configuration engine itself due to
`
`improperly functioning rules. In the section titled “Building Configuration Rules”
`
`Oracle1 describes that the last step is to “Test your new rule.” Oracle1, 52. Oracle1
`
`explicitly teaches testing configuration rules to “determine they are giving you the
`
`desired results” and that the developer can “temporary disable selected rules in
`
`order to determine what rule is causing problems in the Oracle runtime
`
`configurator”:
`
`
`
`
`Oracle1, Ex. 1003, 96-97 (“Test/Debug” Section)
`
`To the extent Versata now wishes to limit “configuration error” to detecting errors
`
`in “the configuration engine itself” due to broken rules, that is provided in Oracle1,
`
`i.e., to “determine what rule is causing problems in the Oracle runtime configurator.”
`
`Ex. 1003, 97 (emphasis added).
`
`
`
`11
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`Configit made this same observation about Oracle1 in its Petition, even before
`
`Versata proposed its overly narrow claim construction argument: “Oracle1’s
`
`approach to debug complex problems was for a tester to enable/disable rules to help
`
`narrow in on an erroneous rule while running test cases. [Ex. 1002] ¶131” Pet., 70
`
`(excepting and showing the “Testing your Configuration Rules” passage above from
`
`Ex. 1003, 96-97); see also Pet., 32 (quoting Ex. 1003, 96-97). The Board also noted
`
`this teaching of Oracle1 in the Institution Decision:
`
`Oracle1 also provides a “Test/Debug” section wherein a user can test a
`model and the configuration rules to determine if errors are generated,
`where selected rules can be disabled to determine if any particular rule
`is cause of a problem. Id. at 95–99.
`
`ID, 12.
`
`Versata goes on to make many incorrect statements about Oracle1. Some of
`
`the more egregious statements (beyond those already addressed above) include:
`
` “Oracle1 and Oracle2 … do not disclose anything about identifying a
`
`configuration error.” POR, 26. That is not correct. As the Petition noted,
`
`Pet. 22, the claim’s requirement “to detect whether the change in the product
`
`configuration, as a result of processing the test case in accordance with the at
`
`least one rule, produced a configuration error in the product configuration” is
`
`provided by Oracle1’s teaching that the resulting change to the product
`
`configuration—arising either because of a new selection or by making a
`
`
`
`12
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`“change [to] one of your selections”—is processed in accordance with the rule
`
`to detect any configuration errors. Ex. 1003, 97 (“If you make a selection that
`
`violates a configuration rule, the configuration window displays a message
`
`describing the violation and your options for dealing with it.”). Oracle2 also
`
`describes “generating error messages from contractions” and commands to
`
`generate information about configuration errors. Ex. 1004, 53-57.
`
` “Oracle1 prevents a user from making selections that violate
`
`configuration rules.” POR, 27. That is not correct. In fact, as the Petition
`
`noted, Pet., 36, “Oracle1 described that it was possible for a “user [to] save
`
`the invalid configuration,” and cautioned but did not prevent the user against
`
`doing so. Ex. 1003, 50.” Oracle1 depicts situations where “the configuration
`
`is not valid” including due to user selections. Pet., 15.
`
` “Oracle1 describes an implementation of product configuration rather
`
`than a debugger for configurators.” POR, 27. That is not correct. As laid
`
`out above, Oracle1 teaches “Test/Debug” including the teaching of “Testing
`
`your Configuration Rules” using the teachings of Oracle1. Ex. 1003, 96-97.
`
`The Board noted this on institution. ID, 12.
`
` “Oracle1 specifically says it concerns only part states that are not
`
`configuration errors.” POR, 28 (emphasis original) (citing Pet., 28 and Ex.
`
`1003, 43). That is not correct. The cited portion of Oracle1, Ex. 1003, 43,
`
`
`
`13
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`says no such thing, and as the Petition established, Oracle1 depicts
`
`configuration errors including logical contradictions in the part states, such as
`
`shown at Pet., 13.
`
` “The [T]est/[D]ebug section of Oracle1 . . . is concerned with preventing
`
`errors in a product configuration by telling configurator end users about
`
`whether their choices are allowed in accordance with rules defined
`
`without errors.” POR, 28. That is not correct. As noted in the Petition and
`
`discussed above, Oracle1 teaches the last step of “Building Configuration
`
`Rules” is to “Test your new rule. See Test/Debug . . . for details about testing
`
`your Configuration Rules.” Ex. 1003, 51-52. As noted above, Oracle1
`
`explicitly teaches testing “Configuration Rules to determine [if] they are
`
`giving you the desired results” and “to determine what rule is causing
`
`problems in the Oracle runtime configurator.” Ex. 1003, 96-97.
`
` “The errors of Oracle1 are . . . in sharp contrast to the ‘configuration
`
`errors’ of the patented claims, which are directed to state errors and
`
`exception errors [from] improperly defined rules.” POR, 28-29. That is
`
`not correct. The ’766 patent describes state errors as occurring when “a part
`
`is put in a state which was not intended by the user” and an exception error as
`
`“a part is put in more than one state at the same time.” Ex. 1001, 6:43-49. As
`
`the Petition lays out, Oracle1 depicts both types of errors. Pet., 12-13
`
`
`
`14
`
`

`

`
`
`Attorney Docket No. 49335-0002IP1
`IPR of U.S. Patent No. 6,836,766
`(showing, e.g., a logical “contradiction with your selection” where a part is
`
`both selected and exclu