Ford Motor Co v. Versata Development Group Inc

1. Case Identification

• Case #: CBM2016-00100
• Patent #: 8,805,825
• Filed: September 12, 2016
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Versata Software, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Attribute Prioritized Configuration Using a Combined Configuration-Attribute Data Model
• Brief Description: The ’825 patent describes a system and method for product configuration that uses a "combined configuration rules-attributes model." This single data model contains both configuration rules and product attributes (e.g., price, weight), which Petitioner argued allows the system to determine valid product configurations and prioritize them based on selected attributes in a single, integrated step.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. § 101 - Claims 1-20 are directed to an abstract idea.

• Core Argument: Petitioner argued that claims 1-20 are unpatentable under §101 because they are directed to the abstract idea of sorting and organizing data based on selected criteria, a fundamental practice that can be performed by a human using pen and paper.
  • Abstract Idea Analysis: Petitioner asserted that the core of the invention is organizing data ("configuration answers") according to preferences (e.g., sorting from lowest to highest price), which is an unpatentable abstract concept. The petition provided a detailed example to illustrate this point: a car dealer before the patent's filing date could use a physical order guide (the "rules") and a price list (the "attributes") for a 2002 Lincoln Continental. The dealer could manually combine this information into a single table (a "combined configuration rules-attributes model") and use it to answer a customer's query for the least expensive combination of options. This mental process of receiving a query, consulting the combined data, and prioritizing the results based on price was argued to be identical to the process claimed in the ’825 patent.
  • Lack of Inventive Concept: Petitioner contended that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite performing the abstract sorting process on a generic, general-purpose computer with conventional components like a "processor," "memory," and "storage medium." Petitioner argued these elements do not add "significantly more" to the abstract idea, as they simply provide a well-understood, routine environment for an otherwise ineligible concept. The claims were not directed to a specific improvement in computer technology or functionality but instead used the computer as a mere tool to perform the abstract task more quickly.

Ground 2: Indefiniteness under 35 U.S.C. § 112 - Claims 16 and 20 are indefinite.

• Core Argument: Petitioner argued that independent claim 16 and its dependent claim 20 are indefinite because they recite multiple "means-plus-function" limitations without disclosing the corresponding algorithm or structure in the specification required to perform those functions.
  • Means-Plus-Function Limitations: The petition identified several limitations in claims 16 and 20 that use "means for" language, such as "means for processing the one or more attribute-based configuration queries" and "means for prioritizing the valid configuration answers." For such computer-implemented claims, the specification must disclose the specific algorithm the computer uses to perform the claimed function; a general-purpose computer is not sufficient structure.
  • Failure to Disclose Algorithm: Petitioner asserted that the ’825 patent specification fails to disclose how the computer performs these functions. Instead of providing a specific algorithm, the specification was said to offer only high-level, functional descriptions that restate the claimed function itself. For example, the disclosure describes that a "preference algorithm" is used to determine a preferred answer but does not disclose the steps of the preference algorithm itself. Petitioner argued that because the patent lacks the necessary algorithmic disclosure to inform a person of ordinary skill in the art of the structure corresponding to the "means" limitations, the scope of claims 16 and 20 is not described with reasonable certainty, rendering them indefinite under §112.

4. Relief Requested

• Petitioner requested the institution of a Covered Business Method review and the cancellation of claims 1-20 of Patent 8,805,825 as unpatentable.