throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA, INC. ET AL.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`_______________
`
`
`PATENT OWNER VERSATA DEVELOPMENT GROUP, INC.’S
`DEMONSTRATIVE EXHIBITS 1 – 49
`FOR APRIL 17, 2013 ORAL HEARING
`
`

`
`

`

`Practical Application of Alleged Abstract Idea
`
`Board:
`(cid:131) “The concept of arranging customer and product data into hierarchies ….”
`
`(ID at 30.)
`
`SAP/Siegel:
`(cid:131) “[T]he rearrangement of prior art pricing data into ‘completely arbitrary’ hierarchies and the
`calculation of product prices using ‘abstracted’ numbers..”
`
`(SP at 17; SX 1005, §§ 44-45, 49.)
`
`Versata/Liebich:
`(cid:131) Claims, in addition to including steps/elements for arranging customer and product data into
`hierarchies and calculating a product price, include separate and distinct steps/elements
`requiring a particular way of determining product price. The combination of steps/elements
`required by the claims represents a practical application of the alleged abstract idea.
`(VR at 16-26, 32, 36-37, 40, 43-44; VX 2091, ¶¶ 56-63, 80, 85-88, 99, 104-107.)
`
`VERSATA DX-1
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claim 17
`
`17. A method for determining a price of a product offered to a purchasing organization
`comprising:
`arranging a hierarchy of organizational groups comprising a plurality of branches such
`that an organizational group below a higher organizational group in each of the
`branches is a subset of the higher organizational group;
`arranging a hierarchy of product groups comprising a plurality of branches such that a
`product group below a higher product group in each of the branches in a subset of the
`higher product group;
`storing pricing information in a data source, wherein the pricing information is
`associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product
`groups;
`retrieving applicable pricing information corresponding to the product, the purchasing
`organization, each product group above the product group in each branch of the
`hierarchy of product groups in which the product is a member, and each
`organizational group above the purchasing organization in each branch of the
`hierarchy of organizational groups in which the purchasing organization is a member;
`sorting the pricing information according to the pricing types, the product, the
`purchasing organization, the hierarchy of product groups, and the hierarchy of
`organizational groups;
`eliminating any of the pricing information that is less restrictive; and determining the
`product price using the sorted pricing information.
`
`VERSATA DX-2
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claim 27
`
`27. A computer implemented method for determining a price of a product
`offered to a purchasing organization comprising:
`retrieving from a data source pricing information that is (i) applicable to
`the purchasing organization and (ii) from one or more identified
`organizational groups, within a hierarchy of organizational groups, of
`which the purchasing organization is a member;
`retrieving from the data source pricing information that is (i) applicable to
`the product and (ii) from one or more identified product groups, within a
`hierarchy of product groups, of which the product is a member; and
`receiving the price of the product determined using pricing information
`applicable to the one or more identified organizational groups and the
`one or more identified product groups according to the hierarchy of
`product groups and the hierarchy of organizational groups.
`
`VERSATA DX-3
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims 26 & 28
`
`26. A computer readable storage media comprising: computer instructions
`to implement the method of claim 17.
`28. A computer readable storage media comprising: computer instructions
`to implement the method of claim 27.
`
`VERSATA DX-4
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claim 29
`
`29. An apparatus for determining a price of a product offered to a
`purchasing organization comprising: a processor; a memory coupled to the
`processor, wherein the memory includes computer program instructions
`capable of:
`retrieving from a data source pricing information that is (i) applicable to
`the purchasing organization and (ii) from one or more identified
`organizational groups, within a hierarchy of organizational groups, of
`which the purchasing organization is a member;
`retrieving from the data source pricing information that is (i) applicable to
`the product and (ii) from one or more identified product groups, within a
`hierarchy of product groups, of which the product is a member; and
`receiving the price of the product determined using pricing information
`applicable to the one or more identified organizational groups and the
`one or more identified product groups according to the hierarchy of
`product groups and the hierarchy of organizational groups.
`
`VERSATA DX-5
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims 17 & 26-29 Are Patent-Eligible Under § 101
`
`Board should issue judgment that claims 17 and 26-29 of the
`‘350 patent are patent eligible under 35 U.S.C. § 101.
`(cid:131) Evidence shows that each of claims 17, 26, 27, 28, and 29, considered as a whole, is
`directed to a specific, practical and advantageous way to determine product price using
`hierarchical groups of customer and products.
`
`(VR at 16-26, 31-37, 39-44.)
`(cid:131) Evidence shows that the “very specific way” required by the claims to determine a product
`price cannot be considered abstract, mere field-of-use limitations, tangential references to
`technology, insignificant pre- or post-solution activity, ancillary data-gathering steps, or the
`like.
`
`(VR at 20-22, 45-49.)
`
`VERSATA DX-6
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims 17 & 26-29 Are Patent-Eligible Under § 101
`
`Board should issue judgment that claims 17 and 26-29 of the
`‘350 patent are patent eligible under 35 U.S.C. § 101.
`(cid:131) Evidence shows that the claimed combination and sequence of elements in claims 17 and
`26-29 were an unconventional, non-routine and not well-known way of determining the price
`of a product.
`
`(VR at 22-26, 32, 36-37, 40, 43-44, 49-51.)
`(cid:131) Evidence shows that the claimed combination and sequence of elements in claims 17 and
`26-29 represented a significant improvement over prior processes and systems for pricing.
`(VR at 22-26, 32, 37, 40, 43-44, 49-51.)
`(cid:131) Evidence shows that claims 17 and 26-29 do not preempt any abstract idea.
`(VR at 26-27, 38, 40, 43.)
`(cid:131) Evidence shows that each of the claims satisfies the machine-or-transformation test.
`(VR at 27-34, 38, 40-41, 44-45.)
`
`VERSATA DX-7
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Problem
`
`A pricing application called R3 made by
`SAP has the prior art disadvantages explained
`above. For example, R3 requires a number of
`price adjustment tables and a number of
`database queries to retrieve applicable price
`adjustments. Likewise, an order entry
`application made by Oracle has a similar
`shortcoming in that a number of database
`queries are required to retrieve various price
`adjustments from a large number of price
`adjustment tables.
`
`SX 1001, 2:56-63
`
`VERSATA DX-8
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Solution
`
`The present invention is a method and
`apparatus for determining prices for various
`products offered to various purchasing
`organizations (in the present application the
`term "purchasing organization" refers to a
`single person as well as to purchasing entities
`such as companies and the like). As stated
`above, in the present application the term
`"product" is used generically to refer to tangible
`products well as intangible products, such as
`services. The invention overcomes the prior
`art's difficulty in storing, maintaining, and
`retrieving the large amounts of data required to
`apply pricing adjustments to determine prices
`for various products. Because of the invention's
`method and apparatus, prices for a large
`number of products can be determined by a
`laptop computer and the prior art's need to
`utilize a mainframe computer is alleviated.
`SX 1001, 3:9-23
`
`VERSATA DX-9
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Solution
`
`The price adjustments for a particular purchasing
`organization are determined by retrieving the price
`adjustments for that particular purchasing
`organization as well as the price adjustments for
`other organizational groups that are above the
`particular purchasing organization in the
`organizational groups hierarchy. Likewise, the price
`adjustments for a particular product are determined
`by retrieving the price adjustments for that particular
`product as well as the price adjustments for other
`product groups that are above the particular product
`in the product groups hierarchy. The invention sorts
`the various pricing adjustments applicable to a
`particular product offered to a particular purchasing
`organization based on several criteria. After the
`sorting is accomplished the pricing adjustments are
`applied in sequence to arrive at a final price at which
`a particular product can be sold to a particular
`purchasing organization.
`
`SX 1001, 3:50-65
`
`VERSATA DX-10
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Solution
`
`The combination of organizational groups and
`product groups hierarchies and the denormalized
`pricing table relating a particular organization (or an
`entire organizational group) to a particular product
`(or an entire product group) result in some of the
`advantages of the present invention over the prior art
`pricing systems. These advantages enable the method
`and apparatus of the present invention to overcome
`the prior art's need to store, maintain, and retrieve
`huge amounts of data required to determine prices for
`various products offered to various purchasing
`organizations while applying a large number of price
`adjustments. The invention also overcomes the
`disadvantages of having to "hard-code" the "business
`logic" into the pricing system. In other words, the
`invention provides for flexibility in formulating a
`desired pricing system while reducing the prior art
`need to store, maintain, and retrieve huge amounts of
`data.
`
`SX 1001, 3:66-4:14
`
`VERSATA DX-11
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Solution
`
`Thus, FIG. 5 illustrates that the invention
`greatly simplifies the prior art tables in at least
`two ways. First, products and organizations are
`categorized in different product and
`organizational groups. Second, the various
`product and organizational groups are
`associated with denormalized numbers whose
`interpretation is determined during run time.
`Each of these two simplifications introduced by
`the present invention results in a great reduction
`in the number of tables stored in different
`locations of the prior art mainframe database.
`One way to view these two simplifications is
`that each of these two simplifications result in a
`reduction of the number of queries to the
`database.
`
`SX 1001, 11:48-59
`
`VERSATA DX-12
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`The Solution
`
`In other words, the prior art made a number of
`queries for obtaining the data in the basic price
`table and various adjustment and subadjustment
`tables in the prior art. As explained above, the
`invention makes fewer queries because the
`invention has eliminated the need for the very
`large number of prior art tables. A reduction in
`the number of queries to the database also
`results in a speed advantage in the present
`invention. Each query to a typical pricing
`database takes about one to two seconds for
`completion. Thus, the reduction in the number
`of queries results in the speed advantage in the
`present invention.
`
`SX 1001, 11:59-12:3
`
`VERSATA DX-13
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`Evidence shows that the claimed invention solved the identified
`problems with the prior art systems.
`(cid:131) The storing, retrieving, sorting, eliminating, and determining steps are advantageous
`because they enable the reduction of the number of tables, and thus the number of queries,
`needed to determine a product price when using hierarchies. See VX 2091, ¶¶ 55-71. This
`in turn enables a significant performance advantage for computers running software
`embodying the invention of the ‘350 patent and provides a technological improvement over
`prior software systems.
`Id
`
`(VR at 19-20.)
`(cid:131) SAP does not dispute that practicing the claimed steps enables the reduction of the number
`of tables and queries, and that this, in turn, enables a significant performance advantage.
`(SR at 5-6.)
`(cid:131) The fact that the claims do not require a number of tables or queries, as SAP notes, is not
`relevant since practicing the claimed steps enables the undisputed advantageous,
`technological improvement.
`
`(SR at 5-6.)
`
`VERSATA DX-14
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`Evidence shows that the claimed invention solved the identified
`problems with the prior art systems.
`(cid:131) SAP documents show that the invention claimed in the ‘350 patent constitutes a specific and
`concrete improvement to technologies in the marketplace and involves activities that were in
`no way routine or conventional at the time of the invention. VX 2091, ¶¶ 113-118 (explaining
`SAP documents VX 2079, 2080, 2082, 2083, 2084, and 2089).
`
`(VR at 49-51.)
`(cid:131) SAP documents show that companies had significant problems with the conventional pricing
`technology utilized by SAP before it adopted the technology claimed in the ‘350 patent in its
`R/3 Release 4.5 product pricing software (found to infringe the ‘350 claims). VX 2091, ¶ 120.
`(VR at 49-51.)
`(cid:131) SAP documents demonstrate that the invention of claims 17 and 26-29 was not routine,
`conventional or well-known as of June 1996 (the time of the invention) and, further, that the
`claimed invention provided a real-world practical solution to the acknowledged performance
`issues that SAP, and it’s customers, were experiencing with the SAP R/3 system in use at
`that time.
`
`(VR at 49-51.)
`
`VERSATA DX-15
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`Evidence shows that the
`claimed invention solved
`the identified problems
`with the prior art
`systems.
`
`(VX 2091, ¶¶ 113-115; VX 2089 at p. 6-12; VX
`2082 at p. 6-14.)
`
`VERSATA DX-16
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`‘350 Patent – Problem and Claimed Solution
`
`Evidence shows that the
`claimed invention solved
`the identified problems
`with the prior art
`systems.
`
`(VX 2091, ¶¶ 116-117; VX 2089 at p. 6-13; VX
`2082 at p. 6-15.)
`
`VERSATA DX-17
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claim 17 is Not Directed to an Abstract Idea
`
`Claim 17 must be considered as a whole.
`(cid:131) § 101 requires evaluating each separate and distinct step of the claimed method and the
`particular ways that each of the storing, retrieving, sorting, eliminating and determining steps
`must be performed.
`
`(VR at 16-18.)
`(cid:131) Neither SAP nor Dr. Siegel considered claim 17 as a whole and thus failed to perform this
`analysis.
`
`(VR at 16-18.)
`
`VERSATA DX-18
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`SAP Failed To Evaluate All Elements Of The Claims
`
`(cid:131) Patent eligibility must be evaluated based on what the claims recite, not on a
`characterization or summary of the ideas upon which they are premised. Diehr, 450 U.S. at
`188. A proper determination of whether claim 17 is directed to patent eligible subject matter
`under § 101 requires an analysis of all of the elements or steps in the claimed process. Id.
`See also Aro Mfg. Co., 365 U.S. at 345.
`
`(VR at 14-15.)
`(cid:131) SAP and Dr. Siegel erroneously evaluated “[t]he concept of arranging customer and product
`data into hierarchies” and “the calculation of product prices using ‘abstracted’ numbers,”
`instead of the specific elements of claim 17. See Petition, p. 17; SX 1005, §§ 44-45, 49.
`(VR at 16-18)
`(cid:131) The requirements for patent eligibility under § 101 must be evaluated considering each of the
`claim elements in combination and the express language of each of the claimed steps, which
`SAP and Dr. Siegel failed to do.
`
`VERSATA DX-19
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`SAP Failed To Evaluate All Elements Of The Claims
`
`(cid:131) Claim 17, in addition to including steps for arranging customer and product data into
`hierarchies and calculating a product price, includes separate and distinct steps requiring a
`particular way of determining product price.
`
`(VR at 16-18.)
`(cid:131) SAP and Dr. Siegel failed to address the storing, retrieving, sorting, eliminating and
`determining steps required by claim 17 and their interrelation with one another and with the
`arranging steps.
`
`(VR at 16-18.)
`(cid:131) SAP’s new position that, when SAP and Dr. Siegel referred to “calculating” they actually
`meant the “storing, retrieving, sorting, eliminating, and determining steps,” is a clear
`recognition of the defective § 101 evaluation set forth in SAP’s Petition and Dr. Siegel’s
`testimony.
`
`(SR at 3-5.)
`
`VERSATA DX-20
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`SAP’s New “Calculating” Argument
`
`(cid:131) SAP rewrites its statement of the alleged abstract ideas in claim 17 so that this time it refers
`to the claim steps (SR at 3):
`
`(cid:131) SAP’s new “calculating” argument is simply an attempt to try to fix SAP’s and Dr. Siegel’s
`defective § 101 analysis by improperly introducing a new argument that could have been, but
`was not, made in SAP’s Petition or Dr. Siegel’s testimony.
`(cid:131) Mischaracterizing the claimed storing, retrieving, sorting, eliminating, and determining steps
`as nothing more than “calculating” does not render the claims unpatentable under § 101, as
`SAP now contends.
`
`(SR at 3-5.)
`
`VERSATA DX-21
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`“Calculating” ≠ Claimed Storing, Retrieving,
`Sorting, And Eliminating Steps
`
`SAP’s Improper
`Rewrite of the Claims Actual Claim Language
`
`“calculating a product price”
`
`“calculating a product price”
`
`“… storing pricing information in a data source, wherein
`the pricing information is associated, with (i) a pricing
`type, (ii) the organizational groups, and (iii) the product
`groups …”
`“… retrieving applicable pricing information
`corresponding to the product, the purchasing
`organization, each product group above the product
`group in each branch of the hierarchy of product groups
`in which the product is a member, and each
`organizational group above the purchasing organization
`in each branch of the hierarchy of organizational groups
`in which the purchasing organization is a member …”
`
`VERSATA DX-22
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`“Calculating” ≠ Claimed Storing, Retrieving,
`Sorting, And Eliminating Steps
`
`SAP’s Improper
`Rewrite of the Claims Actual Claim Language
`
`“calculating a product price”
`
`“calculating a product price”
`
`“… sorting the pricing information according to the
`pricing types, the product, the purchasing organization,
`the hierarchy of product groups, and the hierarchy of
`organizational groups …”
`“… eliminating any of the pricing information that is less
`restrictive …”
`
`VERSATA DX-23
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`“Calculating” ≠ Claimed Storing, Retrieving,
`Sorting, And Eliminating Steps
`(cid:131) SAP’s rewrite of the storing, retrieving, sorting, eliminating, and determining steps as
`“calculating a product price” and arguing that the rewritten claim is abstract is improper and
`pointless.
`
`(SR at 3-5.)
`(cid:131) SAP’s mischaracterization of the claimed steps as “calculating a product price” is inconsistent
`with the actual claim language.
`(cid:131) The claimed “pricing information” and the claimed “storing,” “retrieving,” “sorting,” and
`“eliminating” of the pricing information are not simply numbers and are not a calculation.
`(cid:131) The claimed “pricing information” and the claimed “storing,” “retrieving,” “sorting,” and
`“eliminating” of the pricing information requires information on products (e.g., Apple
`iPhone, Samsung Galaxy, Blackberry Z10), purchasing organizations (e.g., AT&T
`Wireless, Best Buy, Costco), product groups (e.g., smartphone, w/keyboard, Android
`OS) and organizational groups (e.g., carrier, retailer, wholesaler), in addition to prices.
`(cid:131) The claimed storing, retrieving, sorting, and eliminating of the pricing information is not
`simply “calculating a product price” and is not abstract. The combination of steps
`required by claim 17 represents a practical application of the alleged abstract idea.
`(VR at 16-26, 32, 36-37, 40, 43-44; VX 2091, ¶¶ 56-63, 80, 85-88, 99, 104-107.)
`
`VERSATA DX-24
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Specific, Practical And Advantageous Way
`
`The storing, retrieving, sorting, eliminating, and determining
`steps of claim 17 define a specific, practical and advantageous
`way to determine a product price using hierarchical groups of
`customers and products. VX 2091, ¶ 57.
`
`(VR at 18-26.)
`
`(cid:131) Requirements for performing the claimed “storing” step.
`(cid:131) Requirements for performing the claimed “retrieving” step.
`(cid:131) Requirements for performing the claimed “sorting” step.
`(cid:131) Requirements for performing the claimed “eliminating” step.
`(cid:131) Requirements for performing the claimed “determining” step.
`
`VERSATA DX-25
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Specific, Practical And Advantageous Way
`
`Evidence shows that the storing, retrieving, sorting, eliminating,
`and determining steps are meaningful and advantageous.
`
`(VR at 19-23.)
`(cid:131) The claimed steps provide for functionality that enables the reduction of the number of tables
`and, thus, the number of queries needed to determine a product price when using
`hierarchies. See VX 2091, ¶¶ 57, 60.
`(cid:131) This in turn enables a significant performance advantage for computers running software
`embodying the invention of the ‘350 patent and provides a technological improvement over
`prior software systems. See VX 2091, ¶¶ 57, 60.
`(cid:131) The claimed combination of storing, retrieving, sorting, eliminating, and determining steps
`involves substantially different processing than simply “arranging and collecting data” and
`cannot be considered simply “data-gathering” steps or insignificant “post-solution” activity.
`(VR at 20-22.)
`
`VERSATA DX-26
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Specific, Practical And Advantageous Way
`
`SAP continues to ignore claim language and the evidence that
`the required storing, retrieving, sorting, eliminating, and
`determining steps of claim 17 define a specific, practical and
`advantageous way to determine a product price.
`Storing step:
`(cid:131) SAP’s response for the storing step, that “there is nothing special about the data source,”
`ignores the specific and practical requirement of the storing step that the pricing information
`stored is “associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the
`product groups.”
`
`(SR at 6.)
`(cid:131) SAP’s sole focus on the data source, without considering the specifics of the claimed storing
`step, is meaningless in assessing whether the claim is or is not abstract.
`
`(SR at 6.)
`
`VERSATA DX-27
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Specific, Practical And Advantageous Way
`
`SAP continues to ignore claim language and the evidence that
`the required storing, retrieving, sorting, eliminating, and
`determining steps of claim 17 define a specific, practical and
`advantageous way to determine a product price.
`Retrieving and sorting steps:
`(cid:131) Notwithstanding SAP’s new “calculating” argument, SAP says that “these steps merely
`describe the abstract idea of customer (‘organizational’) and product hierarchies” and
`“amount to mere field-of-use or data gathering limitations.”
`
`(SR at 6.)
`(cid:131) SAP fails to provide any explanation as to how or why the retrieving and sorting steps
`allegedly describe customer (‘organizational’) and product hierarchies.
`(cid:131) SAP fails to provide any explanation as to how or why the retrieving and sorting steps
`allegedly amount to mere field-of-use.
`(cid:131) SAP fails to provide any explanation as to how or why the sorting step allegedly amounts to
`data gathering.
`
`VERSATA DX-28
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Specific, Practical And Advantageous Way
`
`SAP continues to ignore claim language and the evidence that
`the required storing, retrieving, sorting, eliminating, and
`determining steps of claim 17 define a specific, practical and
`advantageous way to determine a product price.
`Retrieving and sorting steps:
`(cid:131) Evidence shows that these steps provide meaningful functionality that cannot be
`characterized as mere field-of-use or ancillary data-gathering.
`
`(VR at 21-22; VX 2091, ¶¶ 56-63.)
`
`Eliminating step:
`(cid:131) SAP fails to address the claimed eliminating step.
`
`Determining step:
`(cid:131) SAP fails to address the claimed determining step.
`
`VERSATA DX-29
`SAP v. VERSATA
`CASE CBM2012-00001
`
`(SR at 5-7.)
`
`(SR at 5-7.)
`
`

`

`Specific, Practical And Advantageous Way
`
`SAP continues to ignore claim language and the evidence that
`the required storing, retrieving, sorting, eliminating, and
`determining steps of claim 17 define a specific, practical and
`advantageous way to determine a product price.
`Advantageous, technological improvement:
`(cid:131) SAP does not dispute that practicing the claimed steps enables the reduction of the number
`of tables and queries needed to determine a product price when using hierarchies.
`
`(SR at 5-6.)
`(cid:131) SAP does not dispute that this, in turn, enables a significant performance advantage for
`computers running software embodying the invention of the ‘350 patent.
`
`(SR at 5-6.)
`(cid:131) The fact that the claims do not require a number of tables or queries, as SAP notes, is not
`relevant since practicing the claimed steps enables the undisputed advantageous,
`technological improvement.
`
`(SR at 5-6.)
`
`VERSATA DX-30
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Not Routine, Conventional or Well-Known
`
`The way in which the claimed combination of storing, retrieving,
`sorting, eliminating, and determining steps use customer and
`product data arranged into hierarchies was not routine,
`conventional or well-known at the time of the invention.
`
`(VR at 24-26; VX 2091, ¶ 62.)
`(cid:131) SAP R/3 pricing technology available at that time (i.e., 1996) did not practice the claimed
`combination of steps. VX 2091, ¶ 62. For example, the SAP product did not sort pricing
`information according to pricing types, the product, the purchasing organization, and the
`product and organization group hierarchies, which is why the SAP pricing condition
`technique was recognized as needing significant performance improvement.
`(VR at 24-25; VX 2091, ¶ 62.)
`(cid:131) No evidence or analysis of claim elements by SAP or Dr. Siegel to support allegation that
`claims include routine, conventional, and well-known activities added to abstract ideas.
`(VR at 24; SP at 18; SX 1005, ¶¶ 44-49.)
`
`VERSATA DX-31
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Not Routine, Conventional or Well-Known
`
`The way in which the claimed combination of storing, retrieving,
`sorting, eliminating, and determining steps use customer and
`product data arranged into hierarchies was not routine,
`conventional or well-known at the time of the invention.
`
`(VR at 24-26; VX 2091, ¶ 62.)
`(cid:131) Mr. Liebich, who, unlike Dr. Siegel, was actually working in the field of computerized
`business systems and software, focusing on pricing functionality, testified that he was not
`aware of any pricing technology in the marketplace at that time that performed the
`combination of storing, retrieving, sorting, eliminating, and determining steps set forth in
`claim 17.
`
`(VR at 24-25; VX 2091, ¶ 62.)
`(cid:131) Mr. Liebich’s testimony is supported by evidence. The commercial facts regarding what
`actually happened in the marketplace at the time back up his testimony.
`
`(VR at 25-26.)
`
`VERSATA DX-32
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`No Preemption
`
`Claims 17 and 26-29 do not preempt any abstract idea. (VR at
`26-27, 38.)
`(cid:131) There are many ways to practice the concept of arranging customer and product data into
`hierarchies that fall outside the scope of claims 17 and 26-29.
`(VR at 26-27, 38; VX 2091, ¶¶ 63-66, 89, 108.)
`(cid:131) There are ways to determine a product price using the concept of arranging customer and
`product data into hierarchies without practicing claims 17 and 26-29.
`(VR at 26-27, 38; VX 2091, ¶¶ 63-66, 89, 108.)
`(cid:131) Dr. Siegel acknowledged that there are different ways to perform the alleged abstract idea of
`rearranging pricing data into hierarchies than the specific steps or claim elements that are in
`Claim 17.
`
`(VR at 27; VX 2090, p. 103, l. 23 – p. 104, l. 16.)
`
`VERSATA DX-33
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims Satisfy Machine-Or-Transformation Test
`
`Claim 17 satisfies the machine-or-transformation test. Claimed
`invention is tied to a particular machine – i.e., a programmed
`computer.
`(cid:131) Claim requires the pricing information to be stored in a “data source,” which a person of
`ordinary skill in this field would understand to mean a conventional or unconventional
`computer database.
`(cid:131) Consistent with how the data source is discussed in the ‘350 patent specification. SX 1001,
`col. 10; 55-61.
`(cid:131) Method requiring data to be stored in a computer database requires a computer. Since a
`computer is needed to store (and retrieve) data from a computer database, use of a
`computer is integral to the claimed method.
`
`(VR at 27-31; VX 2091, ¶¶ 67-70.)
`
`VERSATA DX-34
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims Satisfy Machine-Or-Transformation Test
`
`Claim 17 satisfies the machine-or-transformation test. Claimed
`invention is tied to a particular machine – i.e., a programmed
`computer.
`(cid:131) Method cannot be performed using pencil and paper or mentally, without the use of a
`computer.
`(cid:131) Specification of the ‘350 patent, which clearly and consistently describes the claimed method
`as being implemented on a computer, further supports that the invention of claim 17 is tied to
`a particular machine and cannot be performed manually or mentally. See, e.g., SX 1001,
`col. 1, ll 10-12; col. 3, ll. 16-23; col. 5, ll. 8-11, 55-58; col. 8, ll. 64-67; col. 10, ll. 55-61; col.
`11, ll. 17-25; col. 18, ll. 53-55; col. 19, ll. 7-17. See also VX 2077.
`(cid:131) SAP and Dr. Siegel’s statements to the contrary are not credible in view the disclosure of the
`‘350 patent and Dr. Siegel’s subsequent testimony.
`(cid:131) Claimed invention has use and benefit only when implemented on a computer. From a
`practical standpoint, the invention would have no purpose if it were performed mentally or
`with pen and paper (even if it could be, which Versata denies). There would be no
`performance advantage outside of the context of a computer.
`
`(VR at 27-31; VX 2091, ¶¶ 67-70.)
`
`VERSATA DX-35
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims Satisfy Machine-Or-Transformation Test
`
`Claims 27 and 29 satisfy the machine-or-transformation test.
`Claimed invention is tied to a particular machine – i.e., a
`programmed computer.
`(cid:131) Claimed invention tied to a particular machine for the same reasons as claim 17.
`(cid:131) Claim 27 also requires computer implementation which further supports position that recited
`steps cannot be performed without a computer programmed to perform those steps.
`(cid:131) Claim 29 is an “apparatus” claim and requires a “processor,” “memory coupled to the
`processor,” and “computer program instructions.” Claim 29 is not a “method” claim.
`(cid:131) Apparatus of claim 29, including its processor, memory and computer program instructions in
`that memory, is not a “general purpose” computer or machine. Rather, it is a special purpose
`machine when programmed, by the computer program instructions in memory, to perform the
`recited retrieving, retrieving and receiving steps to determine the product price.
`(cid:131) These claims cannot be performed manually or mentally.
`
`(VR at 38, 44-45; VX 2091, ¶¶ 90, 109.)
`
`VERSATA DX-36
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`

`Claims Satisfy Machine-Or-Transformation Test
`
`Claims 26 and 28 satisfy the machine-or-tr

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