UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 7,739,080
`
`CBM Case No.: CBM2016-00101
`
`______________
`
`
`
`FORD MOTOR COMPANY’S PRELIMINARY REPLY IN SUPPORT OF
`ITS PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-
`SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 7,739,080
`
`CBM Case No.: CBM2016-00101
`
`______________
`
`
`
`FORD MOTOR COMPANY’S PRELIMINARY REPLY IN SUPPORT OF
`ITS PETITION FOR POST-GRANT REVIEW (COVERED BUSINESS
`METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-
`SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`
`Atty. Dkt. No.: FPGP0131CBMR1
`
`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
`
`
`
`Patent Owner asserts that the claims of the ‘080 Patent do not fall within AIA
`
`§ 18 under Unwired Planet, LLC v. Google, Inc., 841 F.3d 1376 (Fed. Cir. 2016).
`
`(Paper 6 at 6–14.)
`
`Before Unwired Planet, the PTO had interpreted AIA § 18(d)(1) to include
`
`patents that claim “activities that are financial in nature, incidental to a financial
`
`activity or complementary to a financial activity.” See, e.g., Unwired Planet, 841
`
`F.3d at 1380, n.6. Unwired Planet rejected the “incidental to” and “complementary
`
`to” parts of the PTO’s interpretation. Id. at 1382.1 But, apart from quoting the
`
`statutory language and providing a few negative examples, the Federal Circuit did
`
`not provide a new CBM test. Instead, it vacated and remanded to the Board.
`
`
`1 Although not dispositive here, the court in Unwired Planet did not give proper
`
`Chevron deference to the PTO’s interpretation of the CBM statute, namely that “the
`
`definition of covered business method patent was drafted to encompass patents
`
`‘claiming activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.’” Unwired Planet, 841 F.3d at 1380 n.6; see
`
`Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1337–38 (Fed. Cir. 2008). But even
`
`excluding the PTO’s “incidental to” and “complementary to” interpretation, the ‘080
`
`patent claims cover finance-related activities as explained infra.
`
`1
`
`
`
`Atty. Dkt. No.: FPGP0131CBMR1
`
`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
`
`
`
`Patent Owner argues that the ‘080 patent claims are not CBM claims because
`
`they have “no particular relation to the financial services sector.” (Paper No. 6 at
`
`12.) But that narrow test was rejected in Versata Dev. Grp. v. SAP Am., Inc., 793
`
`F.3d 1306 (Fed. Cir. 2015). In Versata, the Federal Circuit resolved “[a] basic
`
`disagreement between the parties to this case [about] how broadly this [AIA
`
`§ 18(d)(1)] language should be read.” Id. at 1323. The Federal Circuit agreed with
`
`the PTO that “the definition of ‘covered business method patent’ is not limited to
`
`products and services of only the financial industry, or to patents owned by or
`
`directly affecting the activities of financial institutions such as banks and brokerage
`
`houses. The plain text of the statutory definition contained in § 18(d)(1) . . . on its
`
`face covers a wide range of finance-related activities.” Id. at 1325 (emphasis
`
`added). Unwired Planet does not criticize or overturn this holding in Versata.
`
`The claims of the ‘080 patent relate to the “administration or management of
`
`a financial product or service,” under AIA § 18(d)(1). The claims consolidate
`
`configuration models for “a product,” e.g., in the financial services industry: “Many
`
`embodiments of the present invention have application to a wide range of industries
`
`including . . . financial services.” (Ex. 1001 at 18:3-9.) The identical text was
`
`analyzed in Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Paper 8 at 5
`
`(PTAB Oct. 24, 2013). Versata, the Patent Owner here, also owned the patent at
`
`issue in Volusion, U.S. Patent No. 6,834,282. After reviewing the ‘282 patent’s
`
`2
`
`
`
`Atty. Dkt. No.: FPGP0131CBMR1
`
`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
`
`
`
`identical text, the Board readily found that “at least one claim [of the ‘282 patent]
`
`covers data processing or other operations used in the practice, administration, or
`
`management of a financial service.” Id. at 6. That finding did not depend on the
`
`“incidental to” or “complementary to” language rejected in Unwired Planet.
`
`Unwired Planet does not affect the Volusion analysis. The claims of the ‘080
`
`patent cover finance-related activities, namely the administration and management
`
`of configuration models used for financial products and services. As in Volusion,
`
`Patent Owner’s Petition in the present case did “not address the explicit statement in
`
`the [‘080] patent concerning ‘financial services’ that was pointed out in the Petition
`
`[Paper 1 at 4].” Volusion, Paper 8 at 5.
`
`In addition, Unwired Planet does not bar CBM review for a claim that covers
`
`the practice, administration, or management of a financial product or service merely
`
`because that claim might also cover non-financial products or services. No Federal
`
`Circuit case has so held and the CBM statute contains no such limitation. AIA § 18.
`
`Under Unwired Planet, Versata, and Volusion, the ‘080 patent claims are
`
`CBM claims because they cover “data processing or other operations used in the
`
`practice, administration, or management of a financial service.”
`
`Dated: January 18, 2017
`
`
`
`
`
`
`
`
`
` /Thomas A. Lewry/
`Thomas A. Lewry (Reg. No. 30,770)
`Attorney for Petitioner
`
`3
`
`
`
`Atty. Dkt. No.: FPGP0131CBMR1
`
`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that on January 18, 2017 a complete and
`entire copy of FORD MOTOR COMPANY’S PRELIMINARY REPLY IN
`SUPPORT OF ITS PETITION FOR POST-GRANT REVIEW (COVERED
`BUSINESS METHOD REVIEW) UNDER 35 U.S.C. § 321 AND § 18 OF THE
`LEAHY-SMITH AMERICA INVENTS ACT, was served via electronic mail to
`PTAB@skgf.com;
`rsterne-PTAB@skgf.com;
`sbezos-PTAB@skgf.com;
`holoubek@skgf.com;
`jmutsche-PTAB@skgf.com;
`jtuminar-PTAB@skgf.com;
`kchambers@tcchlaw.com; sharoon.saleem@jonesspross.com which will serve the
`following counsel of record:
`
`
`BACK-UP COUNSEL
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`Kent B. Chambers
`Terrile, Cannatti, Chambers & Holland, LLP
`11675 Jollyville Road, Suite 100
`Austin, TX 78759
`
`Sharoon Saleem
`Jones & Spross, PLLC
`1605 Lakecliff Hills Ln., Suite 100
`Austin, TX 78732-2437
`
`
`
`Respectfully submitted,
`
`
`
` /Thomas A. Lewry/
`Thomas A. Lewry (Reg. No. 30,770)
`Christopher C. Smith (Reg. No. 59,669)
`John S. LeRoy (Reg. No. 48,158)
`
`4
`
`LEAD COUNSEL
`Robert Greene Sterne
`Sterne, Kessler, Goldstein & Fox
`PLLC
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No.: CBM 2016-00101
`Patent No.: 7,739,080
`
`Atty. Dkt. No.: FPGP0131CBMR1
`
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`Jonathan D. Nikkila (Reg. No. 74,694)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Attorneys for Petitioner
`
`
`
`
`
`5
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