Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: December 22, 2021
`
`
`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
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`DEBRA K. STEPHENS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 11
`Entered: December 22, 2021
`
`
`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
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`DEBRA K. STEPHENS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`Configit A/S (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`institution of inter partes review of claims 1–5 and 9–19 of U.S. Patent
`No. 6,836,766 B1 (Ex. 1001, “the ’766 Patent”). Versata Development
`Group, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Further to our authorization, both parties submitted
`additional filings, directed to the issues of public availability of certain
`references, as discussed below. (Petitioner’s Reply to Patent Owner’s
`Preliminary Response (Paper 9, “Pet. Reply”); Patent Owner’s Sur-Reply to
`Petitioner’s Reply (Paper 10, “PO Sur-Reply”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018). For the reasons given below, Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of at least one
`of the challenged claims of the ’766 Patent. Accordingly, we institute an
`inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds
`of unpatentability raised in the Petition.
`
`Related Proceedings
`
`Both parties identify the following judicial or administrative matter
`
`that would affect, or be affected by, a decision in this proceeding: Versata
`Software, Inc. et al v. Configit A/S, Case No. 2:20-cv09019 (C.D. Cal.).
`Pet. 74; Paper 4, 1.
`
`2
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`The ’766 Patent
`
`The ’766 Patent is titled “Rule Based Configuration Engine for a
`Database,” and is asserted to “provide[] the ability to test rules in a rule-
`based system for configuring a product.” Ex. 1001, code (54), Abs. With
`respect to the prior art, the ’766 Patent describes “configuring systems” or
`“configuration engines,” which allow a user to configure a product by
`interactively selecting components from various groups based on availability
`and compatibility of features and options. Id. at 1:13–17. It also details that
`the configured product “might consist of several hundred individual parts”
`that might be available on multiple products, and that:
`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 relationships which are not modeled by
`the product structure.
`Id. at 1:27–33. Thereafter, a compiler converts the product structure and
`rules into “rule types,” where “there might be several hundred, several
`thousand, or even more of these rules.” Id. at 1:34–42. Based on selections
`by the client, the parts that are selected or included are “selected,” or “not
`selectable,” if they have been excluded or deleted. Id. at 1:41–53.
`The ’766 Patent also details that “configuration errors may occur
`when a rule or series of rules is not properly defined and produces an
`undesired effect,” and can also occur when a series of improperly defined
`rules causes a part to be in more than one state at the same time. Ex. 1001,
`1:54–61. It also details that for large models, such errors may be difficult to
`find and it is desirable to have “an automated testing tool to locate and
`analyze configuration errors.” Id. at 1:62–67.
`
`3
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`The ’766 Patent discloses its approach to debugging configuration
`errors of a configurator, wherein the “user provides test cases that select at
`least one part to include in the product configuration,” and thereafter, the
`“configuration tester processes the rule to determine whether” the
`configuration choice in the test case “conflicts with the plurality of parts” in
`the configurator. Ex. 1001, 2:7–11. The ’766 Patent also summarizes
`multiple features and embodiments (id. at 2:12–3:29), but ultimately asserts
`that “these embodiments and variations are illustrative and the invention is
`not to be considered limited in scope to these embodiments and variations.”
`Id. at 12:22–25.
`
` Challenged Claims
`Claim 1 is the sole independent claim challenged in this proceeding,
`with each of challenged claims 2–5 and 9–19 dependent thereon, directly or
`indirectly, and is reproduced below:
`1. [1.pre] A method of using a computer system to test a product
`configuration for configuration errors, wherein the product
`configuration is stored as electronic data in a computer system
`for generating product configurations, the computer system
`including at least one rule defining a relationship between at least
`two parts, the product configuration including a plurality of parts,
`the method comprising:
`[1.1] entering a test case into the computer system to detect
`configuration errors in the product configuration, wherein the
`test case includes data to change the product configuration;
`[1.2] processing the test case with the computer system in
`accordance with the at least one rule 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; and
`
`4
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`[1.3] generating explanation data with the computer system to
`provide an explanation of any detected configuration error in the
`product configuration.
`Ex. 1001, 12:30–50 (with annotations provided by Petitioner, Pet. 14–23).
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 1, 12–
`71), supported by the declaration of Dr. Kristin L. Wood (Ex. 1002):
`
`Claims Challenged 35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 9, 10, 14, 19
`
`103(a)1
`
`Oracle1,2 Oracle2,3
`
`15, 16
`
`11–13, 17
`
`2, 18
`
`3–5
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Oracle1, Oracle2, SalesPlus4
`
`Oracle1, Oracle2, SalesPlus, Yu5
`
`Oracle1, Oracle2, Memon6
`
`Oracle1, Oracle2, Memon, SalesPlus
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent claims priority to an application filed before
`March 16, 2013, we refer to the pre-AIA version of § 103.
`2 Oracle® Configurator Developer, User’s Guide, Release 11i for Windows
`95/98 and Windows NT 4.0, April 2000 (Ex. 1003, “Oracle1”).
`3 Oracle® Configurator, Oracle Configuration Interface Object (CIO)
`Developer’s Guide, Release 11i, March 2000 (Ex. 1004, “Oracle2”).
`4 Beologic A/S Reference Guide for the Beologic® salesPLUS™ Product
`Configurator, C language API, Version 2.0, 1995 (Ex. 1005, “SalesPlus”).
`5 Bei Yu et al., “A configuration tool to increase product competitiveness,”
`IEEE Intelligent Systems and their Applications, vol. 13, no. 4, pp. 34-41,
`July-Aug. 1998 (Ex. 1006, “Yu”).
`6 Atif M. Memon et al., “Automated Test Oracles for GUIs,” Proceedings of
`the 8th Int’l Symp. on the Found. of Software Engineering (FSE-8), San
`Diego, CA, Nov. 6, 2000 (Ex. 1007, “Memon”).
`
`5
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`Patent Owner’s Preliminary Response is supplemented by a
`
`declaration of Paul A. Navrátil, Ph.D. (Ex. 2001).
`
`II. ANALYSIS
` Level of Ordinary Skill in the Art
`Petitioner, supported by Dr. Wood’s testimony, proposes that a person
`of ordinary skill in the art at the time of the invention would have had “a
`Bachelor’s degree in Computer Science, Computer or Electrical
`Engineering, Engineering Science, an engineering major with a significant
`computational component, or a similar discipline, or with at least two years
`of research or experience in configurable systems including testing.” Pet. 8
`(citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here 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,” such that Patent Owner
`applies the proposed level of skill in the art without agreeing to it. Prelim.
`Resp. 10 (citing Ex. 2001 ¶¶ 35–37).
`At this stage of the proceeding, we find Petitioner’s proposal
`consistent with the level of ordinary skill in the art reflected by the prior art
`of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579
`F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed
`position as to the level of ordinary skill in the art for purposes of this
`decision.
`
` Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2020). The
`
`6
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Petitioner does not identify any claim elements that warrant express
`constructions, opting instead that “all terms should be accorded their
`‘ordinary and customary meaning . . . as understood by one of ordinary skill
`in the art and the prosecution history pertaining to the patent.’” Pet. 11
`(citing 37 C.F.R. § 42.100(b)). Patent Owner asserts that two claim
`elements should be construed expressly and provides constructions and
`arguments relating to their adoption. Prelim. Resp. 10–16.
`We consider each of Patent Owner’s proposed, express constructions
`below.
`
`“configuration error”
`
`With respect to the limitation “configuration error,” Patent Owner
`asserts that 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.’” Prelim. Resp. 10 (citing Ex.
`1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that
`Patent Owner’s proposed construction is supported by the ’766 Patent
`specification, and adopt Patent Owner’s proposed meaning of “configuration
`
`7
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`error,” with the following remarks with respect to Patent Owner’s additional
`arguments regarding the claim construction.
`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.” Prelim. Resp. 10. We do not agree with Patent Owner’s
`argument because the first part of the construction, namely rules not being
`properly defined and “produc[ing] an undesired effect,” does not specify
`anything about an error being “internal” to the configuration engine. The
`specification provides that such a configuration error “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” (Ex. 1001,
`1:54–61, emphasis added), but the latter clause provides only one example
`of the undesired effect. We are not persuaded, based on our review of the
`Specification of the ’766 Patent that “an undesired effect” should be limited
`to the exclusion of a part. Thus, although Patent Owner argues that “a
`configuration error is not a condition that occurs when a user attempts to
`make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing
`Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition
`would not be an undesired effect, according to the adopted construction.
`Therefore, we do not further limit the construction of “configuration error.”
`
` “test case”
`With respect to the limitation “test case,” Patent Owner asserts that
`the Specification of the ’766 Patent explicitly defines this limitation as “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
`
`8
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`in parts relations and product definitions.” Prelim. Resp. 13 (citing Ex.
`1001, 7:64–8:1; Ex. 2001 ¶ 47). Patent Owner acknowledges that the
`definition was “raised in the context of the embodiment of Figure 3,” but
`asserts that those of skill in the art would have understood its explanation to
`be “definitional.” Id. at 14. Patent Owner also argues that claim
`differentiation supports its definition, as well as the prosecution history
`being consistent therewith. Id. at 14–16.
`At this juncture, we do not agree with Patent Owner’s proposed
`construction. The section of the Specification of the ’766 Patent which
`Patent Owner refers to cite its explicit definition starts off with “FIG. 3
`shows an embodiment of the present invention,” and refers to “test cases
`306,” with respect to that embodiment. Ex. 1001, 7:56, 61. “Test cases” are
`also referenced with respect to the broader summary of invention. See id. at
`2:1–3:29. As Petitioner points out, the Specification of the ’766 Patent
`provides that a user is allowed “to enter a test case, wherein the test case
`selects at least one part to include in the product configuration,” and that “a
`test case [] selects at least one part to include in the product configuration.
`Pet. 19 (citing Ex. 1001, 2:59–62, 17–19). Both citations make clear that the
`broad, but reasonable construction of “test case” is not as constrained as the
`construction proffered by Patent Owner. As such, according to the analysis
`below, we construe “test case” according to its ordinary and customary
`meaning.
`
` Other terms
`We determine that it is not necessary to provide an express
`interpretation of any other claim terms. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`
`9
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”).
`
` Legal Standards – Obviousness
`The U.S. Supreme Court sets forth the framework for applying the
`statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the obviousness
`or nonobviousness of the subject matter is determined. Such
`secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give
`light to the circumstances surrounding the origin of the subject
`matter sought to be patented.
`As explained by the Supreme Court in KSR Int’l Co. v. Teleflex Inc.,
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this analysis
`should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.”)).
`
`10
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`“[W]here a party argues a skilled artisan would have been motivated to
`combine references, it must show the artisan ‘would have had a reasonable
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
` Obviousness over Oracle1 and Oracle2
`Petitioner asserts that the combination of Oracle1 and Oracle2 would
`have rendered the subject matter of claims 1, 9, 10, 14, 19 obvious to one of
`ordinary skill in the art at the time of the invention. Pet. 12–32. Patent
`Owner argues that the asserted prior art references are not prior art to the
`’766 Patent, and those references do not teach or suggest all elements of
`claim 1, and claims dependent thereon challenged in this ground. Prelim.
`Resp. 16–35. We begin with brief discussions of the cited references,
`whether Oracle1 and Oracle2 have been shown to be prior art to the
`’766 Patent, and then consider Petitioner’s arguments with respect to the
`references’ teachings applied to the instant claims as well as Patent Owner’s
`arguments asserting deficiencies in this ground of unpatentability.
`
`Oracle1
`
`Oracle1 is a manual for Oracle’s Configurator product, which
`discloses the configuring of products made up of components, or parts.
`Ex. 1003, 17. Oracle1 also provides that “[a] configurator enables end users
`to access the parts that make up your product and the rules that govern how
`
`11
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`those parts go together. With a configurator, end users can generate any
`custom product configuration that the rules allow.” Id. Oracle1 describes
`implementation of a product configurator as a process including “defining
`test cases, designing the application, constructing and testing the
`application.” Id. at 143.
`Oracle1 also provides a “Test/Debug” section wherein a user can test
`a model and the configuration rules to determine if errors are generated,
`where selected rules can be disabled to determine if any particular rule is
`cause of a problem. Id. at 95–99.
`
`Oracle2
`
`Oracle2 is a developer’s guide to Oracle’s Configuration Interface
`Object (CIO), which it indicates “is needed by developers of applications
`having customized user interfaces that need access to Oracle Configurator
`Active Model.” Ex. 1004, 13. Oracle2 details that CIO “is an API
`(application programming interface) that provides your programs access to
`the Model used by Oracle SellingPoint application, which you construct with
`Oracle Configurator Developer.” Id. at 37. With respect to related
`documents, Oracle2 cites to several related publications directed to Oracle
`Configurator Developer. Id. at 14. Oracle2 also provides a description of
`how product configurations are stored in a computer system. Id. at 42–43.
`
`Statuses of Oracle1 and Oracle2 as Prior Art to the ’766 Patent
`
`Patent Owner asserts that Oracle1 and Oracle2 are not prior art under
`35 U.S.C. § 102(a) or (b). Prelim. Resp. 16–24. Patent Owner argues that
`the evidence presented by Petitioner in the Petition of the publication of
`Oracle1 and Oracle2 is contradictory and insufficient. Id. at 19–24.
`
`12
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`Petitioner asserts ‘[t]he references below [i.e., Oracle 1 and Oracle 2]
`are prior art under at least 35 U.S.C. §102(a) & (b) (pre-AIA) and were
`publicly accessible before the ’766 patent’s priority date of January 31,
`2001.” Pet. 1; see also id. at 1–4 (discussing Oracle1 and Oracle2).
`Petitioner acknowledges that the ’766 Patent’s priority date is January 31,
`2001 (id. at 2), and we discern no concrete assertions by Petitioner that
`Oracle1 and Oracle2 have publication dates or demonstrated public
`availability greater than one year prior to that priority date. Petitioner asserts
`that both were publicly accessible before the priority date, but does not
`establish a publication date of either reference as being January 31, 2000 or
`earlier. As such, we take Petitioner’s position to be that Oracle1 and
`Oracle2 are prior art to the instant patent under 35 U.S.C. § 102(a). To the
`extent that Petitioner continues to assert that Oracle1 and Oracle2 are prior
`art to the instant patent under 35 U.S.C. § 102(b), Petitioner has not provided
`sufficient evidence to demonstrate such a status by a reasonable likelihood
`for either publication.
`Turning to Oracle1 and Oracle2’s status as prior art under § 102(a),
`we determine that Petitioner has sufficiently shown that those references
`were publicly available prior to the ’766 Patent’s priority date of January 31,
`2001 for purposes of institution. See Pet. 2–4; Pet. Reply 1–5; Exs. 1003,
`1004, 1008, 1009, 1016–1019. We respond to Patent Owner’s arguments
`and Petitioner’s counter arguments below.
`Patent Owner argues that Petitioner has not shown an actual date of
`publication or public availability for Oracle1 and Oracle2 because there is no
`evidence of public availability before the critical date of January 31, 2001.
`Prelim. Resp. 17–18. Patent Owner further argues that the “evidence”
`
`13
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`provided by Petitioner is contradictory and insufficient. Id. at 19–24.
`Petitioner disputes those arguments, arguing that the evidence of record
`shows that both Oracle1 and Oracle2 were publicly available prior to the
`critical date, that Petitioner need not prove a precise date of public
`accessibility, and that Patent Owner’s evidentiary objections are premature
`at this point in the proceeding. Pet. Reply 1–5. Patent Owner reiterates that
`“there is no evidence categorically showing that [Oracle1 and Oracle2] are
`prior art,” that Petitioner is trying to convert art under § 102(a) to art under
`§ 102(b), and that Patent Owner does not object to the admissibility of
`Oracle1 and Oracle2, but rather disputes the sufficiency of proof submitted
`with the Petition. PO Sur-Reply 1.
`We address the arguments of the parties in reverse-order. Patent
`Owner argues that the Declaration of Ms. Tina Brand (Ex. 1008) (testimony
`as to the availability of the Oracle references) and the exhibits it refers to as
`being “inadmissible hearsay” (Prelim. Resp. 21–23); this argument is at least
`couched in the form of evidentiary objections, asserting that “the Board
`should exclude” certain exhibits. Id. As Petitioner points out, 37 C.F.R.
`§ 42.64 provides such an opportunity for patent owners to raise evidentiary
`objections after institution. Pet. Reply 5. We agree with Petitioner and
`determine that Patent Owner will have the opportunity to seek to have Ms.
`Brand’s Declaration and its relied-upon exhibits be excluded, and, if
`excluded, it may diminish the weight of evidence applied under the
`preponderance of the evidence standard. To the extent that Patent Owner is
`asking to exclude documents at this stage of the proceeding, we decline to
`take up such considerations.
`
`14
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`With respect to Petitioner’s argument that Petitioner need not prove a
`precise date of public accessibility, we disagree to the extent that Petitioner
`is arguing that it need only show public accessibility prior to the critical date
`of the ’766 Patent. During the course of the ensuing trial, Patent Owner may
`submit evidence seeking to antedate one or both of Oracle1 and Oracle2, but
`without setting a date of publication for each, that would be impossible. We
`agree with Patent Owner that In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986),
`cited by Petitioner (Pet. Reply 4), is applicable to art applied under § 102(b),
`where antedating such a reference is not possible. PO Sur-Reply 2–3. As
`discussed below, at this juncture, we determine that Petitioner has
`sufficiently shown that those references were publicly available prior to the
`’766 Patent’s priority date of January 31, 2001 for purposes of institution.
`As such, we set a date of publication or public accessibility for each
`reference, in considering the evidence and arguments of accessibility below.
`Both parties will be able to submit evidence and/or arguments to alter those
`dates set or seek to antedate or exclude evidence during the course of the
`trial.
`
`For a reference to qualify as a printed publication, “before the critical
`date the reference must have been sufficiently accessible to the public
`interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d
`1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there
`is a presumption of public accessibility as of the publication date.”
`VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see
`also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039,
`Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on
`the totality of the evidence, a reference bearing a copyright date, a printing
`
`15
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`date, and an ISBN date all earlier than the critical date of the challenged
`patent, and the reference was a “textbook from an established publisher”
`provided sufficient indicia at the institution state).
`Turning to the evidence supplied, we have the Declaration of Ms.
`Tina Brand (Ex. 1008). Ms. Brand testifies that she is a co-author of
`Oracle1, that she is familiar with Oracle2, and that both Oracle1 and Oracle2
`are part of Release 11i of the Oracle Product Documentation set. Ex. 1008
`¶¶ 6–8. She also testifies both references were publicly available in 2000,
`although she does not testify to a specific date of publication for either
`publication. Id. ¶¶ 9–20. The Declaration of Mr. Andrew Wolfe also
`testifies to the availability of Oracle1 and Oracle2 during 2000 (Ex. 1009
`¶¶ 10–13), and that PDF metadata for the files on Oracle’s website show that
`Oracle1 was created April 19, 2000 and Oracle2 was created March 19,
`2000 (id. ¶¶ 5–8). These dates comport with the facially dated inscriptions
`on Oracle1 and Oracle2 of “April 2000” and “March 2000,” respectively,
`each bearing “Copyright © 1996, 2000.” Ex. 1003, 1–2; Ex. 1004, 1–2.
`Petitioner also supplies additional exhibits to demonstrate that Oracle1 and
`Oracle2 constitute prior art printed publications. Exs. 1016–1019.
`Patent Owner argues that “no one knows when Oracle1 and Oracle2
`were publicly available,” and that the “declarations render the date on the
`face of the document highly suspect.” Prelim. Resp. 19. Patent Owner also
`argues that Ms. Brand’s testimony, with its lack of specificity, undermines
`the facial dates on each, where she “could have testified to” those dates.
`Prelim. Resp. 20-21 (citing Ex. 1008 ¶¶ 6, 9–10, 13, 16, 18–20).
`We determine that the evidence provided is sufficient at this stage of
`the proceeding to establish a reasonable likelihood that the references were
`
`16
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`published as of the date on the face of the document. Although it might be
`preferable that a declarant provide precise information, we are not persuaded
`to draw negative inferences; we discern no testimony of Ms. Brand that
`undermines the overall disclosure of the evidence supplied with the Petition.
`Patent Owner also argues that many of the exhibits referred to by the
`Brand Declaration are hearsay or are not authenticated. Prelim. Resp. 21–
`23. As discussed above, we are not considering evidentiary objections of
`any of the exhibits at this point in the proceeding.
`Patent Owner also argues that the testimony of Mr. Wolfe does not
`support Petitioner’s arguments, and argues that the creation dates of Oracle1
`and Oracle2 say “nothing about its publication date or its availability to the
`public.” Prelim. Resp. 23. At this juncture, we do not agree; rather, Mr.
`Wolfe testifies to his knowledge of the documents and their general
`availability (Ex. 1009 ¶¶ 10–13), which is additive to the testimony of Ms.
`Brand.
`Looking at all of the evidence presented and taking the arguments of
`the parties into consideration, we determine that Petitioner has sufficiently
`shown that Oracle1 and Oracle2 were publicly available to serve as art under
`§ 102(a) for purposes of institution. For purposes of the trial, based on the
`evidence presented, we determine that Petitioner has shown by a reasonable
`likelihood that the references were published at dates consistent with the
`evidence and testimony submitted, and we set a publication date for Oracle1
`as April 30, 2000 and set a publication date for Oracle2 as March 31, 2000.
`As discussed above, both parties may seek to submit evidence and
`arguments to prove or alter those dates set or seek to antedate or exclude
`evidence during the course of the trial.
`
`17
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`
`Patent Owner’s Arguments Regarding Differences Between
`
`Oracle1 and Oracle2 and Claim 1
`Patent Owner makes general arguments regarding Petitioner’s use of
`Oracle1 and Oracle2, against the claims of the ’766 Patent. Prelim. Resp. 1–
`4, 24–28. More specifically, Patent Owner argues that “[a]t the heart of the
`Petitioner’s obviousness arguments is that prior art configuration engines
`allowed user testing and informed users if they ‘ma[d]e a selection that
`violate[d] a configuration rule.’” Prelim. Resp. 24 (citing Pet. 13). Patent
`Owner contrasts this by stating that the claims are directed to a “debugging
`and testing system.” Id. Patent Owner continues that Oracle1 and Oracle2
`show the operation of a perfectly operating configurator with perfectly
`defined rules and don’t involve any “configuration error” within the scope of
`the claims. Id. at 25. Patent Owner also argues that Oracle1 discusses
`disallowed choices not “configuration errors” within the meaning of the
`claim. Id. at 26. Patent Owner characterizes “configuration errors” of the
`claims as being “directed to state errors and exception errors that would be
`allowed, rather than prevented, by improperly defined rules.” Id. at 28. We
`do not agree with Patent Owner’s arguments.
`As discussed above, although we adopt Patent Owner’s construction
`of “configuration error,” including “a rule or series of rules is not properly
`defined and produces an undesired effect,” we disagree with Patent Owner
`that a configuration error is not a condition that occurs when a user attempts
`to make a choice that is prohibited by a rule. We acknowledge the
`differences that Patent Owner is espousing, but we are not persuaded that
`those differences are differentiated by the claims of the ’766 Patent. As
`discussed above, Oracle1 discloses that users can generate any custom
`product configuration, and can debug or test a model and the configuration
`
`18
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`rules to determine if errors are generated, where selected rules can be
`disabled to determine if any particular rule is cause of a problem. We are
`persuaded that such behavior would result in “configuration error” that
`comports with the claim construction adopted.
`Similarly, Patent Owner argues that:
`In the disclosure of the ’766 patent, those of skill would
`understand “user” to be a configuration engineer using the
`invention
`to
`support product definition design
`and
`implementation rather than a configuration user who uses a given
`product definition outside the creation and maintenance proces
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
