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

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`IPR2021-01055
`U.S. Patent No. 6,836,766
`
`I.
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`B.
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`C.
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`TABLE OF CONTENTS
`
`Summary of the ’766 patent ......................................................................... 1
`A.
`The ’766 patent describes a problem with conflicting rules in a
`complex configurator ......................................................................... 1
`Two types of configuration errors ...................................................... 4
`1.
`State errors ............................................................................... 4
`2.
`Exception errors ....................................................................... 5
`The ’766 patent teaches and claims a debugger for high-
`complexity configuration systems ...................................................... 6
`Configuration error testing ................................................................. 8
`D.
`Prosecution history: the examiner tested the ’766 patent .............................. 9
`II.
`Person of ordinary skill in the art ................................................................. 9
`III.
`IV. Claim construction ......................................................................................10
`A.
`Configuration errors ..........................................................................10
`1.
`The specification defines a “configuration error” as the
`condition that occurs when “a rule or series of rules is not
`properly defined and produces an undesired effect” or “a
`series of improperly defined rules causes a part to be in
`more than one state at the same time” .....................................10
`The Prosecution History is silent on configuration error .........13
`2.
`Test case ...........................................................................................13
`1.
`Definition from the specification ............................................13
`2.
`Claim differentiation supports this definition ..........................14
`3.
`The Prosecution History is consistent with the definition
`of test case ..............................................................................15
`Neither Oracle1 nor Oracle2 are prior art to the ’766 Patent and Memon
`is not § 102(b) prior art ...............................................................................16
`A. Oracle1, Oracle2, and Memon are not prior art under 35 U.S.C.
`§ 102(b) ............................................................................................16
`Oracle1 and Oracle2 are not prior art under 35 U.S.C. § 102(a) ........17
`
`B.
`
`B.
`
`V.
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`1.
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`2.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`Configit knows how to show the date of a prior art
`reference but has not done so for Oracle1 and Oracle2 ...........17
`The “evidence” that Oracle1 and Oracle2 were published
`in 2000 is contradictory and insufficient .................................19
`a)
`The Tina Brand Declaration does not support
`Configit’s arguments .....................................................19
`(1)
`The Tina Brand Declaration calls into
`question even the April 2000 and March
`2000 purported dates of Oracle1 and
`Oracle2 and fails to establish another date ..........19
`(2) Much of Brand’s declaration is inadmissible
`hearsay ................................................................21
`The testimony of Andrew Wolfe does not support
`Configit’s argument for the same reasons the Brand
`Declaration does not .....................................................23
`VI. Claims 1–5 & 9–19 are not unpatentable ....................................................24
`A. Ground 1: Oracle1 in view of Oracle2 does not render claims 1,
`9–10, 14, 19 obvious .........................................................................24
`1.
`Oracle1 describes an implementation of a product
`configurator rather than a debugger for configurators .............26
`Oracle2 is similar to Oracle1 ...................................................28
`Independent claim 1 ................................................................28
`a)
`Oracle1 and Oracle2 do not teach a configuration
`error ..............................................................................28
`(1) Oracle1 does not teach the “configuration
`error” of the preamble (element 1.pre(i)) ............28
`(2) Oracle1 and Oracle2 do not teach a
`computer system to detect configuration
`errors in the product configuration (element
`1.1) .....................................................................30
`(3) Oracle1 and Oracle2 do not teach processing
`anything to detect whether any changes
`produce a configuration error (element 1.2) ........32
`
`b)
`
`2.
`3.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`(4) Oracle1 and Oracle2 do not teach an
`explanation of a configuration error
`(element 1.3) .......................................................33
`Dependent claim 9 is not taught by Oracle1 and Oracle2 ........33
`4.
`Dependent claim 10 is not taught by Oracle1 and Oracle2 ......34
`5.
`Dependent claim 14 ................................................................34
`6.
`Dependent claim 19 ................................................................35
`7.
`Reasons to combine Oracle1 and Oracle2 ...............................35
`8.
`Ground 2: The Oracle1-Oracle2 Combination in Further View
`of SalesPlus does not render claims 15 and 16 obvious .....................35
`Ground 3: The Oracle1-Oracle2 combination in further view of
`SalesPlus, and Yu do not renders claims 11–13 and 17 obvious ........35
`D. Ground 4: The Oracle1-Oracle2 combination in further view of
`Memon do not render claims 2 and 18 obvious .................................36
`Ground 5: The Oracle1-Oracle2-Memon combination in further
`view of SalesPlus do not render claims 3–5 obvious .........................36
`VII. Conclusion ..................................................................................................36
`
`
`
`B.
`
`C.
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`E.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`PATENT OWNER’S EXHIBIT LIST
`
`
`Description
`Declaration of Paul A. Navrátil in Support of Patent Owner’s
`Preliminary Response
`Curriculum vitae of Paul A. Navrátil
`Lora Green & Brian McNamara (JJ.), Best Practices for Proving a
`Document is a Printed Publication, at 14 (Dec. 7, 2017), at
`https://www.uspto.gov/sites/default/files/documents/proving_a_docu
`ment_is_a_printed_publication_12_7_2017.pdf
`
`Exhibit
`No.
`2001
`2002
`
`2003
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`The Petition discusses the ’766 patent as if it is directed to a simple product
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`configuration engine and its interaction with an end user creating a product. The
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`heart of the Petition is that the prior art teaches systems with internal configuration
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`rules that are all properly defined and, thus, cause the configuration engine to
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`function correctly to prevent users from making invalid selections. The error in the
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`prior art is an external error caused by a selection that is properly not permitted by
`
`the rules. But the ’766 patent describes and claims a debugging tool to allow
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`debugging by, for example, engineers to identify configuration errors within and
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`internal to the configuration engine using a debugging GUI in a testing system.
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`This configuration error is produced internally to the operation of the configuration
`
`engine and not an error produced by an external end user’s actions.
`
`I.
`
`Summary of the ’766 patent
`A. The ’766 patent describes a problem with conflicting rules in a
`complex configurator
`The ’766 patent is about “testing the compatibility of parts included in a
`
`configurator.” EX1001, 1:7–10; EX2001, ¶13. The patent describes prior art
`
`“configuring systems” or “configuration engines.” EX1001, 1:13–17; EX2001,
`
`¶13. According to the patent, these prior art devices “allow a user to configure a
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`product by interactively selecting components from various groups based on
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`availability and compatibility of features and options.” EX1001, 1:15–17; EX2001,
`
`¶13.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`The configurator allows “a user to configure a product by interactively
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`selecting components.” EX1001, 1:13–22; EX2001, ¶14. The configured “product
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`might consist of several hundred individual parts” that might be available on
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`multiple products. EX1001, 1:27–29; EX2001, ¶14. When engineers design the
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`configurator, they define a complicated product structure and then define
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`relationships between parts not defined in the product structure:
`
`A product is modeled by describing which parts and part
`groups are available in that product and which choices
`must be made from within the part groups, and then by
`writing additional rules that describe part-to-part rela-
`tionships which are not modeled by the product structure.
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`EX1001, 1:28–33.
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`After an engineer creates those descriptions and rules, a “compiler converts
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`the product structure and rules into” defined, computer-readable rule types. Id.,
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`1:33–35; EX2001, ¶15. The four types of compiled rules are:
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`• “includes” rules, which are parts included by default;
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`• “excludes” rules, which are parts excluded by default;
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`• “removes” rules, which are parts that were previously included but are now
`deleted1; and
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`1 This rule type is generally not present in the initial configuration but is a valid
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`rule state once another choice has been made. EX2001, ¶17.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`• “requires” choice rules, which are parts that require “a choice among a group
`of parts.” EX1001, 1:27–50; EX2001, ¶15.
`
`The configurator, however complex, must always find each and every “part” in one
`
`and only one state. EX1001, 1:50; EX2001, ¶16. For example, a part cannot
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`simultaneously be in an “include” state and an “exclude” state. EX1001, 1:50.
`
`The specification envisions that there will be “several hundred, several
`
`thousand, or even more” rules. EX1001, 1:41–45; EX2001, ¶18. The patent
`
`describes a system without a simple, linear decision tree. In other words, the
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`complete order of part selections is not predetermined. At the beginning of a
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`configuration, every part is in the “selectable” state, since no choices have been
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`made. EX1001, 1:41–45; EX2001, ¶18. Once any selection is made, the
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`configurator rules must ensure that the state of all the other parts is in one and only
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`one state. EX1001, 1:34–53; EX2001, ¶18.
`
`Because the configurator is complicated, the ’766 patent teaches that “errors
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`may be difficult to find due to the large number of rules in the model, the
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`unexpected effects of some configuration operations, and the complex interactions
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`between rules and chains of rules.” EX1001, 1:62–65; EX2001, ¶19.
`
`This is why the patent teaches a “method and apparatus for testing a system
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`for maintaining and configuring products.” EX1001, 3:55–58. In the disclosure of
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`the ’766 patent, those of skill would understand “user” to be a configuration
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`engineer using the invention to support product definition design and
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`implementation rather than a configuration user who uses a given product
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`definition outside the creation and maintenance process. EX2001, ¶52.
`
`Two types of configuration errors
`B.
`The patent characterizes the kinds of configuration errors that can be
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`introduced to a configurator: state errors and exception errors. EX1001, 6:41–45;
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`EX2001, ¶21.
`
`State errors
`1.
`The first type of configuration error occurs “when a rule or series of rules is
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`not properly defined and produces an undesired effect.” EX1001, 1:52–57;
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`EX2001, ¶22. An example of this, according to the specification, is “the exclusion
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`of a part that should be selectable.” EX1001, 1:52–57; EX2001, ¶22.
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`“[S]tate error[s],” like this happen when a “part is put in a state which was
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`not intended by the user.” EX1001, 6:46–47; EX2001, ¶23. Note that “user” here is
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`not a customer end-user of a product configurator, but rather is a user of the
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`debugging/programming interface. See, e.g., EX1001, Fig.3 (302) (noting the use
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`of a configuration tester GUI) ; EX2001, ¶23. These state errors, according to the
`
`’766 patent, occur “when a rule has been accidentally omitted or written.” EX1001,
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`7:8–10; EX2001, ¶23.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`In an exemplary state error of the ’766 patent, the configurator is supposed
`
`to permit PartC to be selectable when PartA and PartB are selected. EX1001, 7:9–
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`12; EX2001, ¶24. The configurator, however, experiences a state error when PartC
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`is “excluded rather than selectable” when PartA and PartB are selected. EX1001,
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`7:10–13; EX2001, ¶24. This state error can be caused by a complex web of
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`interrelated rules. EX1001, 7:19–23; EX2001, ¶24. It’s important to note that this
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`is not an error that occurs when the configurator rule correctly prohibits PartC from
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`being selected in connection with PartA and PartB. EX2001, ¶24
`
`Exception errors
`2.
`The second type of configuration error occurs when rules cause “a part to be
`
`in more than one state at the same time.” EX1001, 1:57–61; EX2001, ¶25. This
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`means, for instance, that a part is simultaneously defined as “‘included’ and
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`‘excluded.’” EX1001, 1:57–61; EX2001, ¶25.
`
`“[E]xception error[s]” like this occur when a “part is put in more than one
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`state at the same time.” EX1001, 6:48–49; EX2001, ¶26. The paradigmatic
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`example of this, according to the ’766 patent, is “PartA includes PartB” and “PartB
`
`excludes PartA.” EX1001, 7:39–42; EX2001, ¶26. So here, for example, one rule
`
`will set “PartA” to “selected” and “PartB” to “include.” Another, simultaneous rule
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`will set “PartA” to “exclude.” EX1001, 7:39–45; EX2001, ¶26. This is an
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`exception type configuration error. And, unsurprisingly, most exception errors are
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`more complicated than this straightforward example. EX1001, 7:46–49.
`
`C. The ’766 patent teaches and claims a debugger for high-
`complexity configuration systems
`The ’766 patent then describes its innovative approach to debugging internal
`
`configuration errors of a configurator. In the inventive debugging system, the “user
`
`provides test cases that select at least one part to include in the product
`
`configuration.” EX1001, 2:7–11; EX2001, ¶27. Then, the “configuration tester
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`processes the rule to determine whether” the configuration choice in the test case
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`“conflicts with the plurality of parts” in the configurator. EX1001, 2:7–11. There
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`are a number of different embodiments of the tester described, but they all select
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`parts and determine whether there is an internal configuration error in the
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`configurator. The tester is used by a debugging user (like the engineer who is in
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`charge of designing, debugging, and implementing the configurator) and not by
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`end users.
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`In the claimed embodiment, the configuration tester includes a “listener” or
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`“driver and listener.” EX1001, 2:27–32; Fig.3A (316); EX2001, ¶28. This
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`component “detects state change events that result in the system being in the
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`initialized part state.” EX1001, 2:27–34; EX2001, ¶28.
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`To display the part state to the debugging user, the ’766 patent discloses an
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`“explainer.” EX1001, 2:39–42; EX2001, ¶29. The explainer “generates an
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`explanation for the part state.” EX1001, 2:39–42; EX2001, ¶29. This allows the
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`debugging user to pinpoint where rule execution caused a disallowed state
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`configuration error: “[t]he explanation(s) are based on selection of a part,
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`execution of a rule, a part being in two states at the same time, a require[d] choice
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`rule cannot be satisfied, or a look ahead process.” EX1001, 2:43–46; EX2001, ¶29.
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`As the patent says, “the invention detects and analyzes configuration errors
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`in a system for configuring products.” EX1001, 4:63–65 (emphasis added);
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`EX2001, ¶30. This is not directed to analyzing external errors caused when a part
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`selection is prevented by properly functioning rules. EX2001, ¶30.
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`According to the specification of the ’766 patent, the system and method
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`concern a “Configuration Tester GUI.” EX1001, Fig.3 (302).
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`IPR2021-01055
`U.S. Patent No. 6,836,766
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`EX1001, Fig. 3 (annotated).
`
`
`
`D. Configuration error testing
`Figure 3 of the ’766 patent includes a specific test case embodiment for use
`
`with the “Configuration Tester GUI.” EX1001, 7:59–8:5; EX2001, ¶32. In an
`
`example of this embodiment, the test case specifies that ProductA and PartA are
`
`selected, which establishes states of ProductA and PartA without external user
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`input selections. EX1001, 8:6–7; EX2001, ¶32. When the test case is run, it also
`
`ensures that PartB and PartC are excluded and that PartD is included. EX1001,
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`8:8–10; EX2001, ¶32. In response to the system processing the test case, the
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`“configuration tester modules [] run each test case.” EX1001, 8:10–15; EX2001,
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`¶32. “If a test fails,” the configuration determines the state problem. EX1001,
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`8:10–15; EX2001, ¶29.
`
`II.
`
`Prosecution history: the examiner tested the ’766 patent
`The file history of the ’766 patent runs, even by Configit’s analysis, to over
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`200 pages. EX1011. There was an office action, id., 164–175, and a corresponding
`
`amendment, id., 176–198. The examiner correctly stated in the reason for
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`allowance that the prior art does not teach the claimed “computer system to test an
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`electronically stored product configuration for errors.” Id., 205. The file history
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`includes evidence of an extensive prior art search conducted by the examiner. E.g.,
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`id., 121–142 (searching IEEE Xplore database); id., 143–162 (searching ACM
`
`portal); id., 163 (searching USPTO database).
`
`III. Person of ordinary skill in the art
`The Petition suggests the following level of ordinary skill in the art:
`
`[A] person with a Bachelor’s degree in Computer Sci-
`ence, Computer or Electrical Engineering, Engineering
`Science, an engineering major with a significant compu-
`tational component, or a similar discipline, or with at
`least two years of research or experience in configurable
`systems including testing.
`
`Petition, 8.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`There may be some differences between this and the correct level of skill in the art
`
`but those differences will not affect this case at this stage. EX2001, ¶¶35–37. For
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`that reason, the Patent Owner (“PO”) will apply this definition at this stage in this
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`proceeding without agreeing to it.
`
`IV. Claim construction
`The Petitioner has not provided any claim constructions. But the
`
`specification and the claims themselves compel two claim constructions relevant to
`
`the Petition’s arguments. Both “configuration error” and “test case” should be
`
`construed at this stage of the proceeding.
`
`A. Configuration errors
`The specification defines a “configuration error” as the
`1.
`condition that occurs when “a rule or series of rules is not
`properly defined and produces an undesired effect” or “a
`series of improperly defined rules causes a part to be in
`more than one state at the same time”
`Configuration error means either (1) the condition that occurs when “a rule
`
`or series of rules is not properly defined and produces an undesired effect” or (2)
`
`“a series of improperly defined rules causes a part to be in more than one state at
`
`the same time.” EX1001, 1:54–61; EX2001, ¶40.
`
`As an initial matter, the specification concerns errors internal to the
`
`configuration engine and not “errors” that prevent product configurator users from
`
`making their desired but impermissible selections. The specification defines
`
`configuration errors as an internal error in one of two categories. Both are errors
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`that occur based on how a rule is defined and when the debugging user is
`
`testing/debugging the configurator (i.e., are internal to the operation of the
`
`configurator) and are not, as Oracle1 and Oracle2 teach, errors merely caused from
`
`“a selection that violates a configuration rule.”
`
`A “configuration error[]” according to the ’766 patent, occurs in two
`
`circumstances. First, it “may occur when a rule or series of rules is not properly
`
`defined and produces an undesired effect, such as the exclusion of a part that
`
`should be selectable.” EX1001, 1:54–61; EX2001, ¶40. Second, a configuration
`
`error “may also occur when a series of improperly defined rules causes a part to be
`
`in more than one state at the same time, such as ‘included’ and ‘excluded,’ or
`
`‘selected’ and ‘deleted.’” EX1001, 1:54–61; EX2001, ¶40. The specification
`
`teaches that various “errors can be introduced into a configuration” such as a state
`
`error or an exception error based on how one or more rules are defined. EX1001,
`
`6:43–49. For this reason, the explicit definition of “configuration error” in the
`
`patent is that a configuration error occurs when “a rule or series of rules is not
`
`properly defined and produces an undesired effect” or “when a series of improperly
`
`defined rules causes a part to be in more than one state at the same time.”
`
`Most importantly, a configuration error is not a condition that occurs when a
`
`user attempts to make a choice that is prohibited by a rule. EX2001, ¶43. Indeed,
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`the configurator is supposed to prevent a user from making a disallowed selection.
`
`Id.
`
`The claimed “configuration errors” are described in Figure 3. See EX1001,
`
`7:56–58. The example in connection with Figure 3 shows that the test case is not
`
`testing for an external user error, but rather an internal configuration error.
`
`Specifically, the test case is not designed to detect whether certain user input is
`
`disallowed. Id., 8:1–13. Rather, the test case is used to internally set state
`
`information and determine whether the internal rule settings of the configurator are
`
`correct. Accordingly, the test case of Figure 3 seeks to ensure that when PartA is
`
`selected, PartB and PartC are excluded and PartD is included. Id.
`
`The patented method as described in Figure 3 ensures that “the tested parts
`
`are in the right state.” Id., 8:11–15. Whether a user can select, for example, PartE is
`
`not described because it’s not relevant to the question of whether the configurator
`
`is properly applying its internal rules. The configuration error being sought in this
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`example is whether the complex configurator correctly includes Part D but
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`excludes PartB and PartC when PartA is selected. This is the only type of
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`configuration error taught in the patent.
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`IPR2021-01055
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`The Prosecution History is silent on configuration error
`2.
`The prosecution is silent as to “configuration error” and therefore those of
`
`skill in the art would have known to look to the specification to determine the
`
`meaning of this term.
`
`B.
`
`Test case
`Definition from the specification
`1.
`Test case means one or more (1) sets of selections that should made and (2)
`
`sets of parts and their expected states based on new rules as well as rules
`
`previously included in parts relations and product definitions. EX2001, ¶47. This is
`
`explicitly defined in the specification, which teaches that:
`
`Test cases 306 describe one or more sets of selections
`that should be made, and sets of parts and their expected
`states based on new rules 304, as well as rules previously
`included
`in parts
`relationships 308 and product
`definitions.
`
`EX1001, 7:64–8:1.
`
`Further, the specification explains the context in which the claims use the
`
`term “test case.” See EX2001, ¶48. That is to say, the claimed method “includes
`
`entering a test case that selects at least one part to include in the product
`
`configuration.” EX1001, 2:17–22. Then the system “processes the rule to
`
`determine whether part selected in the test case conflicts with parts that are already
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`included in the product configuration, that is, whether the rule conflicts with other
`
`rules.” Id.
`
`It is true that this definition is raised in the context of the embodiment of
`
`Figure 3. But those of skill in the art would have understood that the explanation of
`
`“test case” was definitional.
`
`Claim differentiation supports this definition
`2.
`The doctrine of claim differentiation supports this definition. The explicit
`
`definition from the specification of test case means
`
`one or more
`
`[1] sets of selections that should be made, and
`
`[2] sets of parts and their expected states based on new
`rules [], as well as rules previously included in parts
`relationships [] and product definitions [].
`
`EX1001, 7:56–8:4.
`
`The test case is further defined by claim 14 to:
`
`comprise[] data to:
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`select a product;
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`select at least one part; and
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`generate a part state of the selected part based on one or
`more rules.
`
`EX1001, claim 14.
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`IPR2021-01055
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`The test case as defined by claim 14 therefore narrows the test case of claim 1
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`because it further comprises data to select a product, which is not part of claim 1.
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`The test case definition is perfectly consistent with the limitations further
`
`defined by claim 19. Claim 19 says that the test case further includes data to select
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`at least one part to include in the product configuration as claimed in claim 1.
`
`Claim 19 imposes certain requirements about the “processing [the] test case.” Id.,
`
`claim 19. And while the dependent claim is presumed to narrow the independent
`
`claim there is no indication that claim 19 narrows the definition of “test case.” See
`
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374 (Fed. Cir. 2014).
`
`3.
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`The Prosecution History is consistent with the definition of
`test case
`Petitioner argues, improbably, that the prosecution history prevents defining
`
`the term “test case.” Pet., 18–19. But this is wrong.
`
`It is true that PO stated during prosecution that the “specification provides
`
`illustrative support for the term ‘test case.’” EX1011, 193; EX2001, ¶33. This is of
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`no moment, of course, because (as PO told the examiner) the “independent claims
`
`recite a specific type of test case, i.e. ‘a test case... to detect configuration errors in
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`the product configuration.’” Id. Petitioner quotes from the prosecution history that
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`“the present invention is limited by the claims and not by specific embodiments set
`
`forth in the description.” Pet., 18–19 (emphasis added) (citing EX1011, 193).
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`However, this is a tautology, not a “gotcha.” The proposed claim construction does
`
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`not limit the construed claim terms to specific embodiments set forth in the
`
`description but rather construes the claims in view of the specification.
`
`Of course, the invention is limited by the claims and not the specific
`
`embodiments. The claims are, however, defined in view of the specification. See E-
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`Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The
`
`problem is to interpret claims ‘in view of the specification’ without unnecessarily
`
`importing limitations from the specification into the claims.”) And those of skill
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`would understand that the language surrounding “test case” is definitional.
`
`EX2001, ¶34.
`
`V. Neither Oracle1 nor Oracle2 are prior art to the ’766 Patent and
`Memon is not § 102(b) prior art
`A. Oracle1, Oracle2, and Memon are not prior art under 35 U.S.C.
`§ 102(b)
`Configit states that Oracle1, Oracle2, and Memon are prior art under pre-
`
`AIA § 102(b). Pet., 1–5. But Configit has not offered any argument or evidence
`
`that these references meet the statutory requirements of § 102(b). Specifically, only
`
`patents and printed publications dated “more than one year prior to the date of the
`
`application” are pre-AIA § 102(b) art at the PTAB. Configit admits that the priority
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`date for the ’766 patent is January 31, 2001. Id., 1. The earliest possible prior art
`
`date that Configit argues for Oracle1 or Oracle2 is March 2000. Id., 2 (“Oracle2 is
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`dated ‘March 2000,’ and copyright 2000.”); accord EX1009, ¶8 (“Created:
`
`
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`3/19/2000 9:14:17 PM”). Configit seems to admit that Memon was not publicly
`
`accessible before November 13, 2000. Pet., 5. Oracle1, Oracle2, and Memon are
`
`not § 102(b) prior art to the ’766 patent because they were not published more than
`
`one year before the priority date of the ’766 patent.
`
`B. Oracle1 and Oracle2 are not prior art under 35 U.S.C. § 102(a)
`When, according to Configit, were Oracle1 and Oracle2 first publicly
`
`available? Configit and its witnesses do not know. Consequently, the PO and Board
`
`do not either.
`
`1.
`
`Configit knows how to show the date of a prior art reference
`but has not done so for Oracle1 and Oracle2
`The Board applies the Federal Rules of Evidence at the POPR stage. 37
`
`C.F.R. §§ 42.62(a), 42.2. Although the Board’s decisions have not been uniform in
`
`this regard, the date on the face of a document is hearsay if offered to prove public
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`availability. See EX2003 (discussing Carella v. Starlight Archery, 804 F. 3d 135
`
`(Fed. Cir. 1986)).
`
`The prior art date is a “case-by-case inquiry into the facts and circumstances
`
`surrounding the reference’s disclosure to members of the public.” In re
`
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The Board has found that a
`
`librarian’s declaration including a date stamp is sufficient to show public
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`availability. Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Paper 62 at
`
`68 (P.T.A.B. Mar. 15, 2017); Toyota Motor Corp. v. Am. Vehicular Scis. LLC,
`
`
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`IPR2013-00417, Paper 78 at 11–18 (P.T.A.B. Jan. 7, 2015) (use of declaration of
`
`organization librarian to establish date of publication).
`
`Configit surely is aware of this, because it provided a perfectly reasonable
`
`declaration supporting the admissibility of several other prior art references. The
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`Munford declaration is entirely appropriate and provides facially reasonable
`
`evidence that certain references, two IEEE publications, were publicly available by
`
`certain dates. See EX1010. Indeed, PO recognizes that the Petition has
`
`demonstrated that “A Configuration Tool to Increase Product Competitiveness”
`
`was publicly available by November 1998 and “Automated Test Oracles for GUIs”
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`was publicly available by November 14, 2000.2
`
`By contrast, Configit relies on a disorderly hodgepodge of declarations and
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`documents—none of which prove public availability of Oracle1 and Oracle2—
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`precisely because there is no evidence of public availability before the critical date.
`
`
`2 PO does not, however, agree that either of these references are properly combined
`
`either together or with other references to form the basis of any alleged invalidity
`
`of the ’766 patent.
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`2.
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`IPR2021-01055
`U.S. Patent No. 6,836,766
`The “evidence” that Oracle1 and Oracle2 were published in
`2000 is contradictory and insufficient
`The Tina Brand Declaration does not support
`a)
`Configit’s arguments
`
`(1) The Tina Brand Declaration calls into question
`even the April 2000 and March 2000 purported
`dates of Oracle1 and Oracle2 and fails to
`establish another date
`According to Configit, Oracle1 includes the phrase “April 2000” and
`
`Oracle2 includes the phrase “March 2000.” Configit submitted declarations
`
`attempting to support these purported dates. The declarations, however, show that
`
`no one knows when Oracle1 and Oracle2 were publicly available.
`
`At the outset, Configit repeatedly uses the year “2000” as the date of
`
`Oracle1 and Oracle2. E.g., Pet., 3 (“distributed to custom