Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 25
`Entered: October 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CONFIGIT A/S,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`______________
`
`IPR2021-01055
`Patent 6,836,766 B1
`______________
`
`Record of Oral Hearing
`Held: September 16, 2022
`______________
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`
`
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`571-272-7822
`
`
`
`
`Paper No. 25
`Entered: October 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CONFIGIT A/S,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`______________
`
`IPR2021-01055
`Patent 6,836,766 B1
`______________
`
`Record of Oral Hearing
`Held: September 16, 2022
`______________
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JEFFREY SHNEIDMAN, ESQ.
`KENNETH DARBY, ESQ.
`Fish & Richardson, P.C.
`One Marina Park Drive
`Boston, Massachusetts 02210-1878
`(617) 542-5070 (Shneidman)
`shneidman@fr.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ROBERT STERNE, ESQ.
`JAMES HIETALA, ESQ.
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, NW
`Washington, D.C. 20005
`(202) 772-8555 (Sterne)
`Rsterne-PTAB@sternekessler.com
`
`
`
`KENT CHAMBERS, ESQ.
`Terrile, Cannatti & Chambers LLP
`11675 Jollyville Road, Suite 100
`Austin, Texas 78759
`(512) 338-9100
`kchambers@tcciplaw.com
`
`
`
`
`The above-entitled matter came on for hearing on Friday, September
`
`16, 2022, commencing at 3:40 p.m. PT, at the University of Oregon School
`of Law, Portland Campus.
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`IPR2021-01055
`Patent 6,836,766 B1
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`P R O C E E D I N G S
`- - - - -
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`3:41 p.m.
`JUDGE TURNER: Hello, everyone. As part of the introduction, we
`
`are here for oral argument for IPR 2021-01055, Configit v. Versata
`Development Group, involving U.S. Patent No. 6,386,766.
`
`The panel would like to thank the University of Oregon Law School
`for its hospitality in hosting this oral hearing. I am Judge Turner and with me
`today are Judges Stephens and Ippolito. We're going to start off with
`appearances, and I've already talked to counsel and asked them to please
`come to the microphone in the center so we can get everything on the record.
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`So we'll start with appearances. And starting off with Petitioner,
`please enter your appearance in the record if you could, please, stating who's
`speaking and such.
`
`MR. SHNEIDMAN: Thank you, Your Honors. My name is Jeffrey
`Shneidman on behalf of the Petitioner, with the law firm Fish & Richardson,
`joined by my colleague today and lead counsel in this case, Kenneth Darby.
`
`JUDGE TURNER: Thank you. And from Patent Owner, please.
`
`MR. CHAMBERS: For the Patent Owner, I'm Kent Chambers. I'm a
`partner with Terrile, Cannatti & Chambers, and I'll be speaking.
`At the table with me is James Hietala with Sterne and Kessler and also Rob
`Sterne from Sterne and Kessler.
`
`JUDGE TURNER: Thank you very much. I'm going to set forth the
`procedure for the oral hearing today that we're going to be going through
`which -- at the party's request were part of the oral hearing order which was
`paper 22.
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`IPR2021-01055
`Patent 6,836,766 B1
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`Each party will have 45 minutes of total argument. We'll begin with
`
`Petitioner who will be presented its case with regard to the challenged claims
`and the grounds set forth in the petition.
`
`The Petitioner may reserve time for rebuttal. When Petitioner comes
`up to speak if they can let me know which time they want to save for rebuttal,
`I will endeavor to try and provide you with a five-minute warning. When
`you get close to that time, then a two-minute warning in the rebuttal period.
`
`Patent Owner may respond to Petitioner's argument and may reserve
`time for surrebuttal as well. Petitioner may then present its rebuttal followed
`by Patent Owner's surrebuttal. Please note that rebuttal arguments are limited
`to rebutting issues raised in the opposing sides; arguments and are not to be
`used to initiate new arguments.
`
`I've already talked about that I will attempt to try and keep time.
`When it's your turn, please let me know how much time you want for
`rebuttal.
`
`Just a few couple more things before we go. It is my understanding
`that we're not discussing any information that the parties deem confidential in
`this hearing.
`
`I know that there was some information under seal. I'll ask Petitioner
`when you come up if -- I assume, from going through the demonstratives,
`there's nothing we're discussing today. Obviously, this hearing is open to the
`public. So please keep that in mind. We've got a lot of public here today.
`
`Second, please be clear as possible during your argument regarding
`what slide you may be referring to or what exhibit so that the record is clear
`and that we may follow along.
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`IPR2021-01055
`Patent 6,836,766 B1
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`We have the demonstratives in front of us. So there's no need to
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`provide us any additional copies unless you deem to do so.
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`Last but not least, we're also going to go off the record briefly at the
`end of the hearing to see if the court reporter needs any spellings or other
`clarifications before adjourn.
`
`So with that, we will proceed unless let me just -- any questions before
`we proceed from Petitioner? Any questions from Patent Owner's counsel?
`Any questions?
`
`Okay. Petitioner, you may proceed when ready.
`
`MR. SHNEIDMAN: Thank you, Your Honors. And I'd like to
`reserve 15 minutes for rebuttal.
`
`So as I introduce myself, we have the honor of representing the
`Petitioner, Configit A/S in this IPR trial for the '766 patent. And that patent
`is assigned to Patent Owner Versata.
`
`Moving to slide 2, the '766 patent concerns testing in a product
`configurator. The product configurator software, I'd like to thank Simmone
`for the introduction, is software that allows a user to customize a product for
`manufacture or purchase.
`
`And such software has been used since the 1980s. Product
`configurators allow users to configure complex systems such as airplanes or
`automobiles or elevators or whatever.
`
`And on the screen, here is an example of one of the pieces of prior art
`that's used in the petition. This is the salesPLUS reference, Exhibit 1006.
`
`Now one example I'd like to call out is if you wanted to buy a car as
`one type of thing you might configure, you can imagine that you might want
`to go and buy a car with heated seats.
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`IPR2021-01055
`Patent 6,836,766 B1
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`If you go to the car dealer, perhaps they say, well, if you want to buy
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`heated seats, you have to buy the top of the line leather trim package. And if
`you want to buy the cheaper cloth piece, for example, you are restricted from
`buying heated seats.
`
`And so the configurator is going to capture in rules the interactions
`between these parts. And it's going to allow the user to select what types of
`parts go into the product that they ultimately want configured.
`
`So the example I just gave and which I'll refer back to later in the
`presentation, heated seats option requires leather trim. It could be one way of
`encoding that rule that heated seats require leather trim. And cloth trim
`excludes heated seats option. So again, if we want to have the requirement
`that if you have leather trim, you need to have leather trim in order to buy
`heated seats. The heated seats option requires leather trim, and cloth trim
`excludes heated seats option.
`
`That could be two types of rules that would be in this figure. And you
`can actually see in this particular slide on the upper right trims, leather trim.
`You can imagine the interplay with the heated seats.
`
`So advancing to slide 12, this trial is actually a one element case. And
`what I mean by that is the Patent Owner does not contest Petitioner's grounds
`of art except for one claim construction. And I want to note at the outset that
`no matter how the Board decides this claim construction issue, the prior art of
`record invalidates the challenged claim.
`
`Patent owner also raises two smaller issues in the Patent Owner
`response as well that we can address if the Court desires.
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`IPR2021-01055
`Patent 6,836,766 B1
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`Turning to slide 13, the main dispute is the construction of this term,
`
`configuration error. If you see here, Claim 1, a method of using a computer
`system to test a product configuration for configuration errors.
`
`Now what is a configuration error? So turning to slide 14, the petition
`proposed plain meaning. So the meaning of the configuration error is just a
`configuration error.
`
`The Board adopted the Patent Owner's proposal made in its Patent
`Owner preliminary response that a configuration error means, quote, one the
`condition that occurs when a rule or series of rules is not properly defined
`and produces an undesired effect, or two, a series of improperly defined rules
`causes a part to be in more than one state at the same time.
`
`Now the Patent Owner argued in the Patent Owner preliminary
`response that a configuration error was more limited. And the Board -- well,
`I should say what the Patent Owner argued was that it should be errors
`internal to the configuration engine. And the Board properly rejected that
`limitation in its institution decision.
`
`And we ask that the Board do so again now where the Patent Owner
`repeats this argument in its Patent Owner response.
`
`JUDGE TURNER: Counsel, this is Judge Turner. Just a quick
`question, maybe, hopefully, edifying. So a hypothetical, let's say that we
`tweak our construction of configuration error and we take out part 1 and we
`just have part 2.
`
`And this is obviously nobody is arguing this. But let's say it's just part
`2. It's a series of improperly defined rules, cause the part to be in more than
`one state one at a time. If that were in this hypothetical. If that were the
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`IPR2021-01055
`Patent 6,836,766 B1
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`claim construction, would Oracle 1 and 2 still -- or I guess I'm trying to make
`sure. Are we focused on one or two or both or maybe help me out?
`
`MR. SHNEIDMAN: I see 2 as a subset of 1 that a rule or series of
`rules not properly defined and produces an undesired result. One example of
`that is a series of improperly designed rules that causes a part to be in more
`than one state at the same time.
`
`I would say that Oracle 1, it does have a notion of a contradiction
`where -- and I'll get to this example later where essentially you can have the
`requirement that heated seats both be selected and not selected.
`
`However, I think it would not be a proper construction to limit to the
`second phrase only given that the patent, column 1, line 55, gives theses two
`as examples of what the configuration error might be.
`
`JUDGE TURNER: And just to follow up. But I guess my question is,
`it seems like that would be Oracle functioning properly if it says you can
`have this but you can't have that.
`
`But would they be in -- would it cause it to be in more than on state?
`That seems like that's a different type of error that you're talking about. I'm
`just trying to hone in on what you're -- because I see it maybe more as we're
`focused on one. But if you see it as two, I'm open to that construction that
`you're talking about.
`
`MR. SHNEIDMAN: No, I think it's the proper focus probably more
`on one as well. And so I would perhaps leave it at that except to say that I do
`think that Oracle 1 does have a concept of state and it does potentially have a
`set of -- you can construct a set o rules where the state has to be conflicting
`and that would be an error.
`
`JUDGE TURNER: Okay. Thank you.
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`IPR2021-01055
`Patent 6,836,766 B1
`
`MR. SHNEIDMAN: Thank you.
`
`JUDGE IPPOLITO: Counsel, I'm going to follow up with that. So I
`
`think your position is claim construction is not dispositive in favor of Patent
`Owner regardless of what construction we take.
`
`MR. SHNEIDMAN: No matter construction you take, the prior art of
`record invalidates the patents as obvious, yes.
`
`JUDGE IPPOLITO: Okay. Thank you.
`
`JUDGE TURNER: And just to also be clarifying, so if we were to say
`it's internal to the configuration engine, Petitioner's position is Oracle 1 and 2
`still would teach or suggest all of the elements of the --
`
`MR. SHNEIDMAN: Abb.
`
`JUDGE TURNER: -- challenged claim. Thank you.
`
`MR. SHNEIDMAN: I will talk about later why I don't think the
`limitation -- the extra limitation of the Patent Owner puts on this claim makes
`sense.
`
`Again, I ask respectfully that the Board again reject that language. So
`let me turn to slide 15. And what I'd like to do is review how the prior art
`and in particular with the base reference Oracle 1 how that Oracle 1 reference
`is used in combination to render the claims invalid.
`
`Second, I'll explain why Versata's extra claim construction argument is
`incorrect. And Versata's argument again is that these configuration errors are
`internal to the configuration engine.
`
`I'll explain that in a moment. But to preview why that argument, why
`that limitation is not correct, A, the Patent Owner is adding extra limitations
`that simply are not present in the claims.
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`IPR2021-01055
`Patent 6,836,766 B1
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`B, the '799 patent, the specification itself, shows examples of
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`configuration errors that are not internal to the configuration engine. And so
`we would be excluding examples in the specification which is presumptively
`not right.
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`And C, a person of ordinary skill in the art would not have known
`configuration errors to be so limited.
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`And then I'll show why the prior art is also invalidating when we use
`that overly limiting construction.
`
`Now I should note here that Petitioner's arguments are not rebutted
`which is to say we walk through these arguments in our Petitioner reply and
`the Patent Owner did not submit a surreply addressing any of these
`arguments.
`
`So if we turn now to slide 17, this is reviewing the Oracle reference in
`view of the Board's construction.
`
`So Oracle 1 is a prior art manual for the Oracle configurator which
`predated the patent in question.
`
`You can see it's described here as a tool for configuring part or all of
`your products or services.
`
`The parts make up the product. The rules govern how those parts go
`together. And these configuration rules constrain the relationships of the
`parts of the product.
`
`Moving to slide 18, Oracle 1 provides a test/debug section in the
`developer manual which is Oracle 1. And what it describes, among other
`things, is testing your configuration rules.
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`IPR2021-01055
`Patent 6,836,766 B1
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`It says you test your configuration rules to determine that they're
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`giving desired results. And at the bottom, the very last there, it says, you
`determine what rule is causing problems in the Oracle run time configurator.
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`So turning now to slide 20, Oracle 1 generates explanation data to
`provide an explanation to any detected configuration error in the product
`configuration.
`
`And let me take a moment here to address what I think are perhaps the
`differences between the Board's construction and the Patent Owner's extra
`limitation.
`
`If we jump back for a moment to the Board's construction on slide 14,
`I'll focus on the first part of this construction which is the condition that
`occurs when a rule or series of rules is not properly defined and produced an
`undesired effect. Versata's extra limitation again is that this configuration
`error is internal to the configuration engine.
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`And now, with that in mind, let's go back to the configuration error
`messages of Oracle 1.
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`Now the Board's construction would include both of these
`configuration errors whereas the Patent Owner's construction --
`
` JUDGE STEPHENS: Sir, is this section in the test and debug --
`
`MR. SHNEIDMAN: Yes, it is.
`
`JUDGE STEPHENS: -- description?
`
`MR. SHNEIDMAN: Oh, this section here, it is in the following sense.
`
`So test/debug, the answer is literally no. But the test/debug section
`describes how it is that -- if we walk through here on slide 19, it says at the
`bottom in the test/debug section, if you make a selection that violates a
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`IPR2021-01055
`Patent 6,836,766 B1
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`configuration rule, the configuration window displays a message describing
`the violation and your options for dealing with it.
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`And so these are fairly described in Oracle 1 as what happens when
`there's a contradiction.
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`So you're absolutely right, Judge Stephens. This is above -- this is
`around page 50 or 51 of the Oracle 1 reference.
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`JUDGE STEPHENS: So is this a part where the person configuring it
`decides how they want the configuration file they create to appear to the end
`user? Like, if they make it versus testing, would they create it?
`
`MR. SHNEIDMAN: So I believe that in the test/debug process when
`you're debugging, the bug is the error in the configurator in the configuration
`rule which may not be operating correctly.
`And this is the feedback that you would see in the process of doing
`that test/debug.
`But it's also perhaps the same as what the user would see ultimately if
`you deployed this system.
`So the way that the user -- the way that the configuration engineer tests
`and debugs its system is essentially by walking through these steps and
`seeing if they get what they are expecting.
`JUDGE STEPHENS: Okay. Because I sort of thought there were two
`different types of errors.
`One is the person creating the configuration file and errors in the
`configuration file and errors in the configuration file and then the end user
`using it and using it in a way that's going to break a rule.
`MR. SHNEIDMAN: Let me jump ahead to a statement, for example,
`that the opposing expert makes.
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`IPR2021-01055
`Patent 6,836,766 B1
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`And it's on slide 25. And the way that the opposing expert described
`testing is that a configuration engineer can assume the role of the
`configuration user during a model testing process in order to validate that a
`given product model does not contain the configuration errors contemplated
`by the '766 patent.
`In the bottom you see that whether it produces an undesired effect or
`results in more than one state according to the intent of the configuration
`engineer.
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`So that's their expert, what they say. And that's what this is basically
`saying is when we go back to slide 19, this process of doing this
`configuration in the test/debug is you are -- before you're deploying this
`thing, you're seeing what the users would see.
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`And you're finding the error before it gets deployed to a real system.
`Is that helpful?
`
`JUDGE STEPHENS: Yes, thank you.
`
`JUDGE TURNER: But is it problematic if indeed you're seeing
`different errors? I mean, are you seeing errors shown to one acting in that
`role that it's being shown to somebody in the other role?
`
`I mean, you basically had the other side's expert saying, yes, they were
`as a configuration engineer, I'm taking the part of the user. But do you get the
`same error? I mean, can you know that from what's disclosed in the article?
`
`MR. SHNEIDMAN: Well, what you know from Oracle, for instance,
`in testing your configuration rules, you know that you are going to determine
`what problems are occurring. And the way that Oracle 1 teaches what
`problems are occurring is here on slide 19.
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`IPR2021-01055
`Patent 6,836,766 B1
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`If you make a selection that violates configuration or rule, you get the
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`message. I don't think Oracle 1 says there's a special class of error messages
`that go to just the configuration engineer, at least that's not what we're cited
`to.
`JUDGE TURNER: So I mean, I guess that leads to my other question.
`
` So if we were to find -- and I understand that wouldn't be your position. But
`if we were to find that we have to basically put ourselves in view of the claim
`as a construction engineer in order to perform the claim, then that makes the
`obviousness a little bit hazier, I would think, based on what you just said, I
`would think, or maybe not.
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`MR. SHNEIDMAN: Well, this is the Oracle developer manual again.
` So this is the thing designed for the developer, the configuration engineer.
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`If you look at the context of this test/debug section in the upper right
`there, it's test/debug in the lower right. It's constructing a configurator. I
`mean, this is what the configuration engineer is referencing using.
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`I'll just make also the observation that the claims don't say anything
`about who is operating it. And so there's no limitation in that way. And I
`believe the patent itself even -- anyway, that's my answer.
`
`JUDGE TURNER: Okay.
`
`MR. SHNEIDMAN: So going back to the heated seats example here,
`the Board's construction would include both of the configuration errors. And
`the way I can demonstrate this, so for example, with the heated seats, you'll
`remember my example was that rule 1 was that heated seats option requires
`leather trim. And rule 2 was that cloth trim excludes the heated seats option.
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`But let's say the configuration engineer messed up and let's say rule 2
`is incorrectly inputted. So rule 1 is the same. Heated seats option requires
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`Patent 6,836,766 B1
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`leather trim. But the incorrect second rule is that leather trim excludes heated
`seats.
`So it's a contradiction because if you select heated seats, it requires
`
`leather trim. If you select leather trim, it excludes the heated seats.
`
`So that's an example of what we see on the left. It's the type of
`configuration error that certainly falls within the scope of the Board's
`construction which is when a rule or series of rules is not properly defined
`and produces an undesired effect, again, on slide 20 here.
`
`Now consider the error message on the right. Imagine in our car
`example that there are 15 tire sizes. And you can select tire size 1, 2, 3, all
`the way up to 15. And imagine the configuration engineer makes a mistake
`and puts in a rule that says the maximum tire size should be less than 10
`when it was intended to be less than or equal to 15.
`
`And that's a configuration error that's also within the scope of the
`Board's construction. It's also a rule that's not properly defined and produces
`an undesired effect. But it's not an error that meets the Patent Owner's
`limitation of an error being internal to the configuration engine because what
`the Patent Owner means by internal is that there has to be a logical
`contradiction.
`
`And I'll talk more about Versata's limitation in a moment and why it's
`not correct. But I think the slide is useful in understanding the difference
`between the Board's construction and the limitation being sought.
`
`Let's move to slide 22 and talk about why Versata's limitation is not
`correct. The first is a simple plain meaning argument. The word, internal,
`only appears twice in the specification of the patent and never in the same
`sentence or context of the configuration error.
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`IPR2021-01055
`Patent 6,836,766 B1
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`And the patent just doesn't make this distinction. Similarly, the word,
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`engine, although it appears in the specification, is never in the context of a
`configuration error.
`
`So the plan meaning argument is simply you have to insert words here.
` You'd have to insert internal and engine variously throughout the claim.
`
`Second, turning to slide 23, the simplest example of a configuration
`error is not consistent with the Patent Owner's construction.
`
`In other words, what the patent has as a state error, which is one of the
`types of configuration errors in the '766 patent, it says, for example, that the
`simplest type of state errors occur when a rule has been accidently written or
`omitted or written.
`
`And the simple case is, for example, part A excludes part C. So you
`can imagine the rule, leather trim excludes radio, something that shouldn't
`really be related.
`
`It could be a simple rule that was not properly defined and it produces
`an undesired effect. But it's not internal to the configuration engine. It's not
`something that produces an inconsistency.
`
`So it's a simple example in the patent that's excluded by Patent
`Owner's limitation.
`
`Turning to slide 24, just briefly, it's also an unsupported position.
`
`Versata has written in its Patent Owner response at page 21 that those
`of skill in the art would know that configuration errors are internal to the
`configurator.
`
`So it's those of skill in the art. So who does Versata consider skill in
`the art's expert? And Versata doesn't cite its expert at all in this section. And
`why is that?
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`IPR2021-01055
`Patent 6,836,766 B1
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`Well, perhaps the reason we saw a moment ago turning to slide 25.
`
`This is actually a snippet from the Versata expert declaration in support of
`the Patent Owner of preliminary response.
`
`And the version of the declaration submitted for the Patent Owner
`response later in the process deleted some paragraphs but otherwise kept the
`testimony the same.
`
`And one of the paragraphs it deleted is this one. And one reason
`perhaps because you see that while Versata's Patent Owner response claims
`that errors are limited to errors internal to the configuration engine and do not
`deal with end user errors.
`
`That's precisely what Versata's expert is saying you do to determine if
`you have this kind of error.
`
`You assume the role, it's their italics, of a configuration user during the
`model testing process to determine whether or not there's an undesired effect
`or results in more than one state according to the intent of the configuration
`engineer.
`
`And so there's no support on the expert side, the way that they try to
`say what this person of ordinary skill in the art would know, is by citing Dr.
`Kristin Wood, our expert. They attack Dr. Wood. In short, Dr. Wood's
`declaration does not use the word, internal. I see do you have a question?
`
`JUDGE IPPOLITO: I do. I was waiting for you to finish your
`thought. Is there a dispute about the level of ordinary skill in the art?
`
`MR. SHNEIDMAN: I don't believe there is, no.
`
`JUDGE IPPOLITO: Okay. Thank you.
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`IPR2021-01055
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`MR. SHNEIDMAN: Versata did not ask about internal errors in Dr.
`
`Wood's deposition and Dr. Wood's testimony. So I want to pause before I go
`on to see if there's any other questions.
`
`JUDGE TURNER: Real quick. I mean, I think if I take Patent
`Owner's point, they're sort of saying that when Dr. Wood talks about errors,
`in the one part, he is really sort of talking about this type of error. And then
`in another part, he's sort of speaking more generally.
`
`Isn't there a distinction that even Petitioner could admit that there's a
`distinction here in the declaration? Or you certainly don't have to admit it if
`you don't want to.
`
`MR. SHNEIDMAN: I understand the question. I think there's
`different kinds of configuration errors.
`
`And I would point the Board to the testimony. Exhibit 2006 is the live
`testimony of Dr. Wood, page 60, line 1 where there's testimony about the
`types of configuration errors.
`
`In going through and discussing, quote, syntax types of errors,
`semantic errors, logical errors, logical rule errors, there's just many types of
`configuration errors.
`
`Some of these, I think, are logical in contradictions, and some of them
`are simply leather trim excludes radio.
`
`It's not setting up a contradiction and may not necessarily be -- well,
`what my opposing counsel says is internal to the configuration engine.
`
`All right. So then moving on to slide 27, this is the Versata limiting
`construction.
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`IPR2021-01055
`Patent 6,836,766 B1
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`In the yellow you see here, so again, the Versata limiting, extra
`
`limiting construction is that the configuration errors have to be internal to the
`configuration engine.
`
`And Versata makes the claim that nothing in Oracle 1 teaches or
`remotely suggests detecting errors within the configuration engine itself.
`
`I'll just point that's not correct. Oracle 1, if the requirement is to detect
`configuration errors within the configuration engine itself, Oracle 1 teaches
`determining what rules causing problems in the Oracle 1 configurator.
`
`So Oracle 1 is, in fact, describing the situation where the errors are
`internal to the configuration itself.
`
`And the heated seats example is one where the contradiction is
`demonstrative of that.
`
`In the interest of time, I don't think I'm going to go through slides 28,
`29, and 30.
`
`They go through a number of statements that the Patent Owner makes
`about Oracle 1 that are not correct.
`
`And the primary way of trying to attack a Petitioner's position under its
`limiting construction is to simply take a bunch of statements about what
`Oracle 1 supposedly does not do.
`
`And in these slides, which I won't go through, I think, for interest of
`time unless the Board had questions, show why each of these statements is
`not correct.
`
`So I'd like to pause and see if there's any questions on the substance
`here before I move on to covering maybe at least one of the two smaller
`issues.
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`IPR2021-01055
`Patent 6,836,766 B1
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`And I'll point out just on the substance there's no other claim. There's
`
`no other issue in dispute.
`
`So it essentially comes down to this question of claim construction.
`
`But as I said at the outset, no matter how the Board decides on claim
`construction, the prior art invalidates.
`
`JUDGE TURNER: I don't have a question, but I will say you're very
`close to your five-minute mark.
`
`So you've got five more minutes before you go into your rebuttal time.
`
`MR. SHNEIDMAN: Okay. Maybe I'll just hit one of these then. So
`Oracle 1 and Oracle 2 are indeed prior art. The Patent Owner puts in a fairly
`cursory argument.
`
`I'd say that there's no evidence that these are manuals for the same
`product and there's no reliable evidence that either references prior art.
`
`This may be a copy and paste error. A lot of the Patent Owner
`response is lifted from the Patent Owner preliminary response. And I don't
`think there is a section 5 that addresses this. The petition, to be clear,
`however, did point out how Oracle 1 and Oracle 2 are manuals together for
`the Oracle configurated product.
`
`And we've put forward a large set of evidence that is prior art. And
`the Board correctly found starting at the bottom of the slide of slide 33 that
`the Petitioner had shown for purposes for institution that Oracle 1 and Oracle
`2 were publicly available before the '766 priority date.
`
`And the record has only gotten better which is the material under seal
`further collaborates and corroborates the showing that we made in the initial
`petition.
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`All right. With that, I think I'll stop unless the Board has any questions
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`and reserve the rest for rebuttal.
`
`JUDGE IPPOLITO: Just one. There's no motion to exclude in this
`case. Is that correct?
`
`MR. SHNE
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