Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 12
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`Entered: March 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00101
`Patent 7,739,080 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`

`CBM2016-00101
`Patent 7,739,080 B1
`
`
`I. INTRODUCTION
`Ford Motor Company, (“Petitioner”) filed a Petition requesting a
`covered business method patent review of claims 1–22 of U.S. Patent No.
`7,739,080 B1 (Ex. 1001, “the ’080 patent”). Paper 1 (“Pet.”). In response,
`Versata Development Group, Inc. (“Patent Owner”) filed a Patent Owner
`Preliminary Response. Paper 6 (“Prelim. Resp.”). In its Patent Owner
`Preliminary Response, Patent Owner asserts, with supporting evidence, that
`it filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a), disclaiming
`claim 22. See Prelim. Resp. 37; Ex. 2009. Accordingly, no covered
`business method patent review will be instituted for claim 22. See 37 C.F.R.
`§ 42.207(e).
`Subsequent to the parties’ submissions, we authorized Petitioner to
`file a Reply, addressing the impact of Unwired Planet, LLC v. Google Inc.,
`841 F.3d 1376 (Fed. Cir. 2016), decided after Petitioner filed its Petition and
`cited by Patent Owner in its Preliminary Response. Paper 7. We authorized
`Patent Owner to file a sur-reply. Id. The parties submitted their respective
`papers on this issue. Paper 10 (“Reply”); Paper 11 (“Sur-Reply”).
`Under 35 U.S.C. § 324, a post-grant review may not be instituted
`“unless . . . the information presented in the petition . . . would demonstrate
`that it is more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.”
`For the reasons that follow, we do not institute a covered business
`method patent review of claims 1–21 of the ’080 patent.
`
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`CBM2016-00101
`Patent 7,739,080 B1
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`
`A. Related Matters
`The ’080 patent is involved in the following lawsuit: Ford Motor Co.
`v. Versata Software, Inc., No. 2:15-cv-10628 (E. Mich.). Pet. iv; Paper 4, 2.
` In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has
`been sued for infringement of the ’080 patent. Pet. 2. Patent Owner does
`not challenge Petitioner’s certification that it has been sued for infringement
`of the ’080 patent.
`
`B. The ’080 Patent
`The Specification of the ’080 patent describes a system and method
`for consolidating multiple configuration models of a product. Ex. 1001,
`1:9–11. In particular, configurations are built on configuration models for a
`product where the model is a collection of rules defining buildable
`configurations of a product. Id. at 2:57–58. The invention looks for
`relationships in a directed acyclic graph (DAG) to arrive at the model. Id. at
`10:21–28. The patent describes an example of two models, where one
`model is adjusted in order to permit its combination with the other model.
`Id. at 9:14–16.
`
`C. Illustrative Claim
`Claim 1 is representative and is reproduced below:
`1.
` A method of using a computer system to consolidate
`multiple configuration models of a product, the method
`comprising:
`
`
`
`performing with the computer system:
`
`identifying a conflict between at least two of the
`
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`CBM2016-00101
`Patent 7,739,080 B1
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`
`configuration models, wherein the configuration models
`are organized in accordance with respective directed
`acyclic graphs, each configuration model includes at least
`one ancestor configuration model family space and a
`child configuration model family space below the
`ancestor configuration model family space, a first of the
`conflicting configuration models comprises an ancestor
`configuration model family space that is different than an
`ancestor configuration model family space of a second of
`the conflicting configuration model, and each child
`configuration model family space constrains the ancestor
`configuration model family space above the child in
`accordance with configuration rules of the configuration
`model to which the child belongs;
`
`extending at least one of the ancestor configuration
`model family spaces of the conflicting configuration
`models so that the ancestor configuration model family
`spaces of the first and second conflicting configuration
`models represent the same ancestor configuration model
`family space;
`
`removing from the child configuration model family
`space any configuration space extended in the ancestor of
`the child configuration family space; and
`
`combining the first and second configuration models into
`a single, consolidated model that maintains a non-cyclic
`chain of dependencies among families and features of
`families for use in answering configuration questions
`related to the product.
`Ex. 1001, 18:16–49.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–21 of the ’080 patent are
`unpatentable under 35 U.S.C. § 101 and that claims 2, 10, and 16 are
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`CBM2016-00101
`Patent 7,739,080 B1
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`indefinite under 35 U.S.C. § 112, ¶ 2.1
`
`E. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). For purposes of this Decision, we
`determine that no claim term requires explicit interpretation.
`
`II. DISCUSSION
`A covered business method patent is “a patent that claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service, except that the term does not include patents for technological
`inventions.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”) § 18(d)(1) (emphasis added); see 37 C.F.R.
`§ 42.301(a).
`The U.S. Court of Appeals for the Federal Circuit recently held the
`following regarding the scope of covered business method (CBM) patent
`review:
`CBM patents are limited to those with claims that are directed to
`methods and apparatuses of particular types and with particular
`uses “in the practice, administration, or management of a financial
`product or service.” The patent for a novel lightbulb that is found
`to work particularly well in bank vaults does not become a CBM
`
`1 As explained above, Patent Owner filed a statutory disclaimer, disclaiming
`claim 22.
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`Patent 7,739,080 B1
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`patent because of its incidental or complementary use in banks.
`Likewise, 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. All
`patents, at some level, relate to potential sale of a good or service.
` Take, for example, a patent for an apparatus for digging ditches.
`Does the sale of the dirt that results from use of the ditch digger
`render the patent a CBM patent? No, because the claims of the
`ditch-digging method or apparatus are not directed to “performing
`data processing or other operations” or “used in the practice,
`administration, or management of a financial product or service,”
`as required by the statute. It is not enough that a sale has occurred
`or may occur, or even that the specification speculates such a
`potential sale might occur.
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016)
`(footnote omitted) (citations omitted); see also Secure Axcess, LLC v. PNC
`Bank Nat’l Ass’n, No. 2016-1353, 2017 WL 676601, at *9 (Fed. Cir. Feb.
`21, 2017) (“Necessarily, the statutory definition of a CBM patent requires
`that the patent have a claim that contains, however phrased, a financial
`activity element.”); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1340 (Fed. Cir. 2016) (approving of prior Board decisions that “properly
`focuse[d] on the claim language at issue and, finding nothing explicitly or
`inherently financial in the construed claim language, decline[d] to institute
`CBM review,” and finding that the challenged patent was eligible for review
`because the claims recited “an express financial component in the form of a
`subsidy” that was “central to the operation of the claimed invention”);
`Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir.
`2015) (stating that “the definition of ‘covered business method patent’ is not
`limited to products and services of only the financial industry” and “on its
`
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`CBM2016-00101
`Patent 7,739,080 B1
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`face covers a wide range of finance-related activities”).
`A patent need have only one claim directed to a covered business
`method to be eligible for review. Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent
`and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug.
`14, 2012). Petitioner must demonstrate that the patent for which review is
`sought is a covered business method patent. 37 C.F.R. § 42.304(a).
`Petitioner focuses on independent claims 1, 3, and 4 to demonstrate that the
`’080 patent is a covered business method patent. Pet. 5–62; Reply 2–3.
`
`Petitioner argues that claims 1, 3, and 4 are directed to configuration
`
`
`2 In its Petition, Petitioner also includes independent claim 22 in its analysis.
` Claim 22 is similar to independent claims 1, 3, and 4. As discussed above,
`Patent Owner filed a statutory disclaimer, disclaiming claim 22 after the
`Petition was filed. In its Reply, Petitioner does not argue that disclaimed
`claim 22 should be considered in determining whether the ’080 patent
`qualifies as a covered business method patent. We treat disclaimed claim 22
`as if it never existed. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term
`‘considered as part of the original patent’ in section 253 to mean that the
`patent is treated as though the disclaimed claims never existed.”); Guinn v.
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35
`U.S.C. § 253 has the effect of canceling the claims from the patent and the
`patent is viewed as though the disclaimed claims had never existed in the
`patent.”); see also Genetics Inst., LLC v. Novartis Vaccines and Diagnostics,
`Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (holding that the Board’s
`interference jurisdiction under 35 U.S.C. § 291 required “the existence of an
`interference, and a claim that ‘never existed’ [due to a statutory disclaimer]
`cannot form the basis for an interference” (citation omitted)); Blue Calypso,
`815 F.3d at 1340 (citing previous Board decisions that “properly focuse[d]
`on the claim language at issue”).
`
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`CBM2016-00101
`Patent 7,739,080 B1
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`models of a “product,” and, thus, are directed to configuring salable products
`that a customer can purchase, directing attention to examples in the
`Specification of the ’080 patent describing that configuration models can be
`used to make a product that may be purchased, such as an automobile,
`computer hardware, financial services, etc. Pet. 4–5 (citing Ex. 1001, 1:14,
`1:22–26, 1:38–39, 18:3–9). Petitioner concludes that “the configuration
`process/system claimed in the ’080 patent is at least ‘incidental to’ or
`‘complementary to’ a financial activity, such as sales of automobiles,
`computers, financial services, or other products.” Id. at 5.
`
`Petitioner’s arguments made in its Petition are not persuasive because
`the arguments are based on the incorrect “incidental to” or “complementary
`to” language stemming from the AIA legislative history that was rejected by
`the Federal Circuit in Unwired Planet. See id. at 5; 841 F.3d at 1380–82.
`The issue is whether the ’080 patent “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service.”
`AIA § 18(d)(1). We evaluate Petitioner’s arguments based on that statutory
`language.
`In its Reply, Petitioner essentially makes the same arguments it did in
`the Petition, that the claims cover configuring salable products that a
`customer can purchase and includes configuring such products applicable to
`“financial services.” Reply 2 (citing Ex. 1001, 18:3–9). Petitioner argues
`that the claims, when read in light of the ’080 patent’s Specification, cover
`finance-related activities, namely the administration and management of
`configuration models used for financial products and services. Id. at 2–3
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`CBM2016-00101
`Patent 7,739,080 B1
`
`(citing Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir.
`2015); Volusion, Inc. v. Versata Software, Inc., Case CBM2013-00017, slip
`op. at 5 (PTAB Oct. 24, 2013) (Paper 8)). We agree with Patent Owner,
`however, that claims 1, 3, and 4 are “agnostic to the product or the specific
`use of the product.” See Prelim. Resp. 13–14. Moreover, claims 1, 3, and 4
`do not recite anything with respect to the type of product or the use of the
`product. Specifically, there is nothing in the claims themselves that specifies
`that the product is for a financial service, or that claims 1, 3, and 4 are
`applicable to sales of the claimed product. Petitioner also does not provide
`any proposed interpretation for the terms of the claims, such that they would
`include any of these features, and, thus, be financial in nature. See Pet. 10.
`Nor do we find any other language in claims 1, 3, or 4 relating to sales of a
`product, or that the product is a financial product or service. Versata is
`inapposite to the facts before us, because the claims involved in that case are
`not generic, as are the ones before us, but rather include terms directed to
`“finance-related activities.”
`We agree with Petitioner that the Specification of the ’080 patent
`describes that the invention has application to financial services. Ex. 1001,
`18:3–9. The Specification of the ’080 patent also describes, however, that
`the invention has application to “a wide range of industries” such as
`manufacturing and construction industries. Id. In evaluating Petitioner’s
`arguments and evidence, we must focus on the claims, not on embodiments
`described in the specification, some of which are related to financial services
`and some of which are not. See Secure Axcess, 2017 WL 676601, at *6
`(“the written description alone cannot substitute for what may be missing in
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`CBM2016-00101
`Patent 7,739,080 B1
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`the patent ‘claims,’ and therefore does not in isolation determine CBM
`status”). Lastly, we have considered Petitioner’s arguments regarding
`Volusion. Reply 2–3. Volusion, a Board decision, came well before the
`Federal Circuit Unwired and Secure Axcess decisions. We decline
`Petitioner’s apparent invitation to depart from Federal Circuit precedent. In
`summary, we have considered each of Petitioner’s arguments, but do not
`find them persuasive given the generic, broad claims, and the corresponding
`broad disclosure in the Specification of the ’080 patent.
`For the foregoing reasons, based on the record presented and the
`particular facts of this proceeding, Petitioner has not established that the
`’080 patent claims a method or apparatus for performing data processing or
`other operations used in the practice, administration, or management of a
`financial product or service. Therefore, the ’080 patent does not qualify as a
`“covered business method patent” under § 18(d)(1) of the AIA, and we do
`not institute a covered business method patent review on any of the asserted
`grounds as to any of the challenged claims.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to challenged claims 1–21 of
`the ’080 patent.
`
`
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`CBM2016-00101
`Patent 7,739,080 B1
`
`PETITIONER:
`Thomas A. Lewry
`Christopher C. Smith
`John S. LeRoy
`Jonathan D. Nikkila
`John P. Rondini
`Frank A. Angileri
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`csmith@brookskushman.com
`jleroy@brookskushman.com
`jnikkila@brookskushman.com
`jrondini@brookskushman.com
`fangileri@brookskushman.com
`
`PATENT OWNER:
`
`Robert Greene Sterne
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jmutsche-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`Kent B. Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, L.L.P.
`kehambers@tcchlaw.com
`
`Sharoon Saleem
`JONES & SPROSS, P.L.L.C.
`sharoon.saleem@jonesspross.com
`
`
`
`11
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