Petitioner’s Oral Hearing Demonstratives
`
`Configit A/S (Petitioner)
`v.
`Versata Development Group, Inc. (Patent Owner)
`
`Case Nos. IPR2021-01055
`U.S. Patent No. 6,836,766
`
`Demonstrative Exhibit
`
`1
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`CONFIGIT 1056
`Configit A/S v. Versata Dev. Grp.
`IPR2021-01055
`
`1
`
`

`

`Prior Art: Product Configurators
`
`Ex. 1006, 6; Ex. 1002 ¶¶ 36-37; Pet., 9
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`2
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`The ’766 Patent
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`3
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`3
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`The ’766 Patent
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`Ex. 1001
`
`Ex. 1001, cl. 1
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`4
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`The ’766 Patent
`The examiner did not consider the correct prior art
`
`Ex. 1011 at 205
`
`Ex. 1042
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`5
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`The ’766 Patent
`Lots of relevant prior art was not considered in prosecution
`
`Exs. 1024, 1029, 1033, 1032, 1034, 1037, 1038, 1051
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`6
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`The ’766 Patent
`Lots of relevant prior art was not considered in prosecution
`
`Ex. 1035
`
`Ex. 1035, 3
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`7
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`Summary of Grounds
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`8
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`The Grounds
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`Pet., 1
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`9
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`The Grounds
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`Versata does not independently dispute Grounds 2-5 (POR, 36):
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`10
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`Outline of Disputed Issues
`
`1. Claim construction of “configuration error” /
`“configuration error in the product configuration”
`
`2. Oracle1 and Oracle2 are prior art
`
`3. Dr. Kristin Wood’s testimony is reliable
`
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`11
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`Outline of Disputed Issues
`
`1. Claim construction of “configuration error” /
`“configuration error in the product configuration”
`
`2. Oracle1 and Oracle2 are prior art
`
`3. Dr. Kristin Wood’s testimony is reliable
`
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`12
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`Issue 1: “configuration error”
`
`Ex. 1001, cl. 1
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`13
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`Issue 1: “configuration error”
`
`The Board
`
`A 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.’ …
`“Patent Owner, however, also argues that “the specification
`concerns errors internal to the configuration engine and not
`‘errors’ that prevent product configurator users from making
`their desired but impermissible selections.” … We do not agree
`with Patent Owner’s Argument.”
`
`- ID, Paper 11, 7 (emphasis added)
`
`POR
`
`[Agrees with construction] But repeats the POPR argument to
`limit the construction further, adding: “and is internal to the
`configuration engine”
`
`- POR, Paper 15, 11.
`
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`14
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`

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`Issue 1: “configuration error”
`Summary of Issue 1
`
`• The challenged claims are invalid under the Board’s claim construction
`
`• Versata’s claim construction argument is incorrect
`Versata adds extra limitations: “internal” and “engine”
`A. The claims are not so limited
`B. The ’766 specification shows configuration errors that are not so limited
`C. The POSITA would have known configuration errors are not so limited
`
`• The challenged claims are invalid under Versata’s overly limiting POR
`construction
`
`Pet. Reply at 1-9
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`15
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`15
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`

`Issue 1: “configuration error”
`Summary of Issue 1
`
`• The challenged claims are invalid under the Board’s claim construction
`
`• Versata’s claim construction argument is incorrect
`Versata adds extra limitations: “internal” and “engine”
`A. The claims are not so limited
`B. The ’766 specification shows configuration errors that are not so limited
`C. The POSITA would have known configuration errors are not so limited
`
`• The challenged claims are invalid under Versata’s overly limiting POR
`construction
`
`Pet. Reply at 2
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`16
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`Prior Art: Oracle1
`
`Ex. 1003, 1 & 17
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`17
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`

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`Prior Art: Oracle1
`
`Ex. 1003, 7 & 95-98
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`18
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`

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`Prior Art: Oracle1
`
`Ex. 1003, 97 (extract)
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`19
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`The Prior Art: Oracle1
`
`Ex. 1003, 49-51
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`20
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`Issue 1: “configuration error”
`Summary of Issue 1
`
`• The challenged claims are invalid under the Board’s claim construction
`
`• Versata’s claim construction argument is incorrect
`Versata adds extra limitations: “internal” and “engine”
`A. The claims are not so limited
`B. The ’766 specification shows configuration errors that are not so limited
`C. The POSITA would have known configuration errors are not so limited
`
`• The challenged claims are invalid under Versata’s overly limiting POR
`construction
`
`Pet. Reply at 2-6
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`21
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`Issue 1: “configuration error”
`A) The claims are not limited to “errors internal to the configuration engine”
`
`Ex. 1001
`
`Pet. Reply at 3-4
`
`^
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`22
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`Issue 1: “configuration error”
`B) The ’766 specification teaches errors that are not so limited
`
`Ex. 1001
`
`Ex. 1001, 7:7-11; Pet. Reply at 4-6.
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`23
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`Issue 1: “configuration error”
`C) The POSITA would have known configuration errors are not so limited
`
`Versata’s POR (at 21):
`
`• Versata does not cite its expert for this position
`
`• Versata’s attacks on Dr. Kristin Wood misrepresent Dr. Wood’s testimony
`
`1. Dr. Wood’s declaration does not use the word “internal” (Ex. 1002)
`2. Versata did not ask about “internal” errors at Dr. Wood’s deposition (Ex. 2005)
`3. Dr. Wood’s well-supported testimony shows no such limitation is appropriate
`Pet. Reply, 7-8.
`
`POR, 16; Pet. Reply at 6-8
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`Issue 1: “configuration error”
`
`Versata’s POR: “the claims are limited to errors internal to the configuration engine
`and do not deal with end user errors”
`
`POR, 12 (emphasis in original)
`
`Versata’s expert:
`
`Ex. 2001 ¶ 48
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`25
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`Issue 1: “configuration error”
`Summary of Issue 1
`
`• The challenged claims are invalid under the Board’s claim construction
`
`• Versata’s claim construction argument is incorrect
`Versata adds extra limitations: “internal” and “engine”
`A. The claims are not so limited
`B. The ’766 specification shows configuration errors that are not so limited
`C. The POSITA would have known configuration errors are not so limited
`
`• The challenged claims are invalid under Versata’s overly limiting POR
`construction
`
`Pet. Reply at 10-15
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`26
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`Issue 1: “configuration error”
`All challenged claims are obvious under Versata’s limiting construction
`
`Versata incorrectly claims (emphasis in original):
`
`But Oracle1’s “Test/Debug” section describes:
`
`POR, 2 (emphasis in original)
`
`Pet. Reply 10-12
`
`Ex. 1003, 96-97
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`27
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`Issue 1: “configuration error”
`Versata misrepresents the teachings of Oracle1
`Versata incorrectly argues…
`When in reality… (Pet. Reply, 10-13)
`
`“Oracle1 simply prevents an
`end-user from making a part
`selection excluded by a properly
`functioning configuration
`engine.” POR, 2.
`
`“Oracle1 prevents a user from
`making selections that violate
`configuration rules.” POR, 27.
`
`“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 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’).”
`“[N]ot correct. [A]s 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.”
`
`Pet. Reply 10-13, Ex. 1003, 50; Ex. 1002 ¶ 103
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`Issue 1: “configuration error”
`Versata misrepresents the teachings of Oracle1
`Versata incorrectly argues…
`When in reality… (Pet. Reply, 12-15)
`
`“Oracle1 [does] not disclose anything
`about identifying a configuration error.”
`POR, 26.
`
`“Oracle1 describes an implementation
`of product configuration rather than a
`debugger for configurators.” POR, 27.
`“Oracle1 specifically says it concerns
`only part states that are not
`configuration errors.” POR, 28
`(emphasis original)”
`
`“[N]ot 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 ‘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.’ Ex. 1003, 97.”
`“[N]ot correct. 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.”
`“[N]ot correct. The cited portion of Oracle1,
`Ex. 1003, 43, 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.”
`
`Pet. Reply 10-13; Ex. 1003, 51; Ex. 1002 ¶ 69
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`29
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`Issue 1: “configuration error”
`Versata misrepresents the teachings of Oracle1
`
`Versata incorrectly argues…
`
`When in reality… (Pet. Reply,12-15)
`
`“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.
`“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.
`
`“Oracle1 is designed to prevent rather
`than detect errors.” POR, 29.
`
`“[N]ot correct. … 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. … 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.”
`
`“[N]ot 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. … Oracle1 depicts both types of errors. Pet., 12-13 (showing, e.g.,
`a logical ‘contradiction with your selection’ where a part is both selected and
`excluded’ and a configuration that is ‘not valid’ because ‘the current value’
`selected is above a threshold). These events can occur due to improperly
`defined configuration rules. See Ex. 1003, 96-97 (advising testing ‘to
`determine what rule is causing problems in the Oracle runtime
`configurator.’).”
`“[N]ot correct. Oracle1 repeatedly describes detecting configuration errors in
`the manner that the ’766 Patent later claimed as its own invention, including
`in ’766 claim 1. See also Pet., 13 (showing pictures from Oracle1 including
`‘The configuration is not valid’ messages with explanations that describe
`detected configuration errors).”
`
`Pet. Reply 10-13
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`Outline of Disputed Issues
`
`1. Claim construction of “configuration error” /
`“configuration error in the product configuration”
`
`2. Oracle1 and Oracle2 are prior art
`
`3. Dr. Kristin Wood’s testimony is reliable
`
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`Issue 2: Oracle1 and Oracle2 are prior art
`Versata’s POR:
`
`Petition:
`
`Oracle1:
`
`Oracle2:
`
`POR, 35
`
`Pet., 31
`
`Ex. 1003, 14; Ex. 1004, 14
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`Issue 2: Oracle1 and Oracle2 are prior art
`Summary of “prior art” evidence
`• Unrebutted testimony by Tina Brand, the Oracle1 co-author and
`Oracle1/Oracle2 supervisor, testifying as to specific methods of distribution
`prior to critical date (Ex. 1008)
`• Unrebutted testimony by Andrew Wolfe, former Development Manager of
`Oracle Configurator, testifying as to public availability and specific distribution
`prior to critical date (Ex. 1009)
`• Unrebutted testimony under seal from Oracle Corporation declarant,
`providing corporate records evidence of public availability no later than
`May 18, 2000 (Exs. 1053 & 1054)
`• Unrebutted corroborating evidence including metadata, facial publication
`data, and “wayback machine” exhibits supporting fact witness testimony.
`Exs. 1003, 1004, 1008, 1009, 1016-1019.
`• The Board correctly found that “Petitioner has sufficiently shown that [Oracle1
`and Oracle2] were publicly available prior to the ’766 Patent’s priority date of
`January 31, 2001” (ID, 13) and Petitioner has further supported that finding.
`
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`Outline of Disputed Issues
`
`1. Claim construction of “configuration error” /
`“configuration error in the product configuration”
`
`2. Oracle1 and Oracle2 are prior art
`
`3. Dr. Kristin Wood’s testimony is reliable
`
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`34
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`Issue 3: Dr. Wood’s testimony is reliable
`
`• Dr. Wood provided reliable expert testimony, including based on expertise
`and knowledge of the “testing of product configurators and the creation of
`configuration models and rules, development of test cases, and the
`debugging of configuration models.” Ex. 1002, ¶¶ 15-17.
`
`• Dr. Wood’s testimony does not improperly use hindsight, and explained
`the literal teachings of Oracle1 and other references. Pet. Reply at 16-17
`(citing Ex. 1002 ¶¶ 103, 137, 150).
`
`• Dr. Wood’s testimony does not support Versata’s positions and Versata
`mischaracterizes Dr. Wood’s testimony. Pet. Reply at 17-18.
`
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`Appendix
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`36
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`36
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`Prior Art: Oracle1
`
`Ex. 1003, 1 & 17
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`37
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`Prior Art: Oracle1
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`Ex. 1003, 7 & 95-98
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`38
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`Prior Art: Oracle1
`
`Ex. 1003, 97 (extract)
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`39
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`Prior Art: Oracle1
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`Ex. 1003, 49-51
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`40
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`Prior Art: Oracle2
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`Ex. 1004, 42-43
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`41
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`Prior Art: SalesPlus
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`Ex. 1005, 23
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`Ex. 1005, 24
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`42
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`Prior Art: SalesPlus
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`Ex. 1005, 28
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`Ex. 1005, 28
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`43
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`Prior Art: SalesPlus
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`Ex. 1005, 27
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`Ex. 1005, 28
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`44
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`Prior Art: Yu
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`Ex. 1006, 6
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`Ex. 1006, 6
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`Prior Art: Yu
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`Ex. 1006, 4
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`Ex. 1006, 4
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`46
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`Prior Art: Yu
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`Ex. 1006, 4
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`47
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`Prior Art: Memon
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`Ex. 1007, 2
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`Ex. 1007, 8
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`48
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`48
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`The ’766 Patent
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`Ex. 1001
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`Ex. 1001, cl. 1
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`49
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`49
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`

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`The ’766 Patent
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`Ex. 1001
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`50
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`50
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