UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`V.
`
`VERSATA DEVELOPMENT GROUP, INC.
`
`Patent Owner
`
`Case CBM201 6-00101
`
`Patent No. 7,739,080
`
`VERSATA’S SUR—REPLY TO FORD’S PRELIMINARY REPLY
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`V.
`
`VERSATA DEVELOPMENT GROUP, INC.
`
`Patent Owner
`
`Case CBM201 6-00101
`
`Patent No. 7,739,080
`
`VERSATA’S SUR—REPLY TO FORD’S PRELIMINARY REPLY
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`CBM2016—0O101
`
`Patent No. 7,739,080
`
`Despite originally only arguing in its petition that the ’08O patent claims are
`
`“incidental or complementary” to a financial product or service, Ford provides
`
`additional briefing in an attempt to recast the claimed recitation of “a product” as
`
`finance-related activity. But Ford’s arguments
`
`still
`
`fail, by placing undue
`
`significance on an example specification embodiment rather than the claims
`
`themselves, and seeking broad applicability of CBM review based only on cases
`
`that existed prior to Unwired Planet while ignoring post- Unwired Planet decisions.
`
`Ford argues that the recitation of “a product” in several claims of the ’O80
`
`patent relates to financial services (see Ford Prelim. Reply, p. 2), and thus are
`
`directed to finance-related activities. But Ford’s premise, that the claims recite
`
`financial services,
`
`is unsupported by the metes and bounds of the claims
`
`themselves, or by any testimonial evidence. The specification gives exemplary
`
`applications of the ’O8O disclosure “to a wide range of industries,” with financial
`
`services being only one
`
`example among several,
`
`including construction,
`
`professional services, and manufacturing across various industries. (’08O patent,
`
`18:3—9.) As said in Unwired Planet, “it cannot be the case that a patent covering a
`
`method and corresponding apparatuses becomes a CBM patent because its practice
`
`could involve a potential sale of a good or service.” Unwired Planet, No. 2015-
`
`1812, slip op. at 12.
`
`Here, as in Unwired Planet, the claims are industry—agnostic at heart, and
`
`-1-
`
`
`
`CBM20l 6-001 01
`
`Patent No. 7,739,080
`
`this weak connection to finance—related activities is insufficient in a post— Unwired
`
`Planet CBM proceeding. The weakness of Ford’s argument is evident in Ford’s
`
`failure to address the standard in View of a_ny decisions applying Unwired Planet,
`
`including the facts of Unwirea’ Planet
`
`itself. These decisions are,
`
`so far,
`
`unequivocally unfavorable to Ford and fatal to its position. The ’080 patent claims
`
`at best could involve financial services —— in specific embodiments of the claimed
`
`inventions. But this unduly myopic restriction is neither a requirement of the
`
`claims nor in any way central to the functioning of the claims.
`
`Further, Ford’s comparison of the Volusion and ’080 patent specifications,
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`rather than their claims, must be of no moment here. The Volusiorz claims bear no
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`resemblance to the ’O80 patent claims. And, the Board is not bound by pre-
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`Unwirea’ Planet, non—precedential panel decisions. In any event,
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`the Volusion
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`claims would arguably have been found not CBM—eligible had the reasoning of
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`Unwirea’ Planet been applied. Ford’s citation in this regard to such a non-
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`authoritative case is purely conclusory. Of far more import is the Board’s treatment
`
`of CBM eligibility since the November 21, 2016 decision in Unwirea’ Plarzetl,
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`denying institution in T—M0bz'le v.
`
`Intellectual Ventures II, CBM20l6—00083;
`
`Kayak v. IBM CBM20l6—00077 and —00078; and Facebook V. Skky, CBM20l6-
`
`1 Ford’s analysis of Volusion in view of the Unwirea’ Planet decision opens the
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`door to further consideration of the full state of the case law.
`
`-2-
`
`
`
`CBM2016-00101
`
`Patent No. 7,739,080
`
`00091?
`
`In particular,
`
`in Kayak the petitioner argued that claims directed to “[a]
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`method for presenting interactive applications” and “generating at least a first
`
`partition for presenting applications” are “limited to financial contexts because the
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`recited ‘applications’ can be financial in nature.” Kayak -00077, Paper 15 at p. 12.
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`But in denying institution, the Board found that the record supported several non-
`
`financial applications. Id. The parallel to the ’O80 patent’s embodiments is direct.
`
`Additionally, Ford’s statement that “Patent Owner’s Petition [sic]
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`did
`
`‘not address the explicit statement
`
`in the [’O80] patent concerning ‘financial
`
`9
`services’ that was pointed out in the Petition” is a misrepresentation (see, eg,
`
`POPR, pp. 8 and 12-13). This language was fully addressed with regard to
`
`Unwirea’ Planet.
`
`Ford’s analysis therefore fails to show how the industry-agnostic claims of
`
`the ’O80 patent fall within the statute, an therefore institution must be denied.
`
` Date: January 25, 2017
`
`By:
`reene Sterne (Reg. No. 28,912)
`Robert
`Lead Counsel for Patent Owner
`
`2 CBM review was instituted in three post- Unwired Planet cases. These are the two
`
`Plaid Techs. v. Yodlee decisions at CBM2016—00088 and -00089 (explicit claim to
`
`“financial
`
`transaction”
`
`/ “amount of the transaction”) and Emerson v. Sipco,
`
`CBM20l6-00095 (explicit claim to “ATM” / “vending machine”).
`
`-3-
`
`
`
`CBM2016-00101
`
`Patent No. 7,739,080
`
`CERTIFICATE OF SERVICE 137 C.F.R. § 42.6§e)[
`
`The undersigned hereby certifies that a true and correct copy of the enclosed
`
`VERSATA’S SUR—REPLY TO FORD’S PRELIMINARY REPLY was served
`
`electronically Via e—mail on January 25, 2017 in its entirety on the following
`
`counsel of record for Petitioner:
`
`Thomas A. Lewry (Lead Counsel)
`Christopher C. Smith (Back-up Counsel)
`John S. LeRoy (Back-up Counsel)
`Frank A. Angileri (Back-up Counsel)
`John P. Rondini (Back-up Counsel)
`Jonathan D. Nikkila (Back-up Counsel)
`BROOKS KUSHMAN P.C.
`
`1000 Town Center, Twenty—Second Floor
`Southfield, Michigan 48075
`FPGPO l 3 l CBMR1 @brooksl<ushman.com
`
`Respectfully submitted,
`
`Date: January 25,2017
`
`By:
`
`[
`
`[gig/12 QQLWR
`
`Robert Greene Sterne, Registration No. 28,912
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1 100 NEW YORK AVENUE, NW
`
`WASHINGTON, D.C. 20005
`
`(202) 371-2600
`
`Lead Counselfor Patent Owner
`Versata Development Group, Inc.
`
`
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