Ford Motor Co v. Versata Development Group Inc

1. Case Identification

• Case #: IPR2017-00146
• Patent #: 5,825,651
• Filed: October 28, 2016
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Versata Development Group, Inc.
• Challenged Claims: 1-14 and 60-72

2. Patent Overview

• Title: Method and Apparatus for Configuring a System
• Brief Description: The ’651 patent discloses a software system for product configuration. The system includes a "maintenance system" with a graphical user interface for defining a product in terms of its components and their relationships, and a "configuration system" that allows a user to configure a valid product based on that definition.

3. Grounds for Unpatentability

Ground 1: Obviousness over Axling and Fohn - Claims 1-4, 6-10, 12-13, 60-62, 64-68, and 70-71 are obvious over the Axling Papers in view of Fohn.

• Prior Art Relied Upon: Axling Papers (Axling 1994, a conference proceeding, and Axling 1996, a journal article) and Fohn (a 1995 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Axling Papers disclose the OBELICS system, which uses a graphical "Domain Model Editor" to define a system (e.g., a computer) and its product/part relationships. This graphical editor allows users to generate a system definition by creating relationships corresponding to "required," "optional," and other classifications, satisfying the limitations of independent claims 1 and 60 regarding graphically generating and conveying system definitions. Fohn was argued to disclose the PC/CON system, which provides a complementary "spreadsheet-like" interface for configuring a product and validating user input against a product model. Fohn's disclosure of validating user selections (e.g., memory amount vs. processor capability) against the model and presenting valid options or violation notices was asserted to meet the "validating" and "identifying" limitations of the claims.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references because they are complimentary. The Axling Papers provided strong detail on the graphical product definition and maintenance, while Fohn provided more detail on the user-facing configuration and validation aspects. A POSITA would have been motivated to draw upon the innovative aspects of both systems to create a single, comprehensive, and user-friendly product configuration application that could be used by non-experts.
  • Expectation of Success: A POSITA would have had an expectation of success in combining the teachings, as it would involve applying known programming methods to integrate the user interface and validation features of Fohn with the graphical definition system of Axling.

Ground 2: Obviousness over Axling, Fohn, Skovgaard, and Baker - Claims 5, 11, 63, and 69 are obvious over the Axling Papers and Fohn, further in view of Skovgaard 1995 and Baker.

• Prior Art Relied Upon: Axling Papers, Fohn, Skovgaard 1995 (a conference paper), and Baker (a 1990 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 to address claims requiring the use of bit-vectors for processing relationships. Petitioner argued that while Axling and Fohn teach the high-level system, they do not detail the low-level data representation. Skovgaard 1995 was introduced for its disclosure of a "salesPLUS" configurator that uses "array inference technology" to efficiently execute constraints. Baker was introduced for teaching that "bit vectors are extremely useful for... the representation of sets and relations." Petitioner asserted that a POSITA, seeking to efficiently implement the constraint model from Axling/Fohn, would look to Skovgaard's compiled array approach and would find it obvious to use Baker's well-known bit-vectors as the underlying data structure for that array to perform bit-level comparisons.
  • Motivation to Combine: The motivation was to improve the performance and efficiency of the configuration system. A POSITA would combine the functional system of Axling/Fohn with the efficient "constraint solver" architecture of Skovgaard. It would then be a common-sense design choice to implement Skovgaard's array using the well-known and efficient bit-vector data structures taught by Baker for representing the required sets and relationships.
  • Expectation of Success: The use of bit-vectors and bit-arrays was a well-known technique at the time for representing information at a low level of granularity, making it a predictable and reliable option for a skilled artisan.

Ground 3: Obviousness over Axling, Fohn, and Skovgaard - Claims 14 and 72 are obvious over the Axling Papers and Fohn, further in view of Skovgaard 1995.

• Prior Art Relied Upon: Axling Papers, Fohn, and Skovgaard 1995.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim limitations requiring that user input for selecting elements can be made in any order. Petitioner argued Fohn's PC/CON system allows users "the flexibility to start anywhere in the problem space," and Skovgaard 1995 explicitly touts its salesPLUS system as providing "full freedom in the order of choices." Skovgaard contrasts this with the drawbacks of rigid "decision trees" used in prior art systems.
  • Motivation to Combine: The motivation was to improve the usability and flexibility of the configuration interface. A POSITA would recognize the limitations of a fixed-order configuration process and would be motivated by both Fohn and Skovgaard's teachings to implement a system allowing for a "free order of choices," which was a known objective in the field.
  • Expectation of Success: Implementing a non-sequential input system was a known design goal with a clear and predictable benefit to the end-user.

4. Key Claim Construction Positions

• Petitioner adopted several constructions from a prior district court litigation involving the ’651 patent for terms like "product relationship" and "part relationship."
• Petitioner also proposed its own constructions for key terms not previously construed, arguing they were supported by the intrinsic evidence:
  • "configuring a system": "an end user specifying a product based on a system definition"
  • "system": "a collection of components that can be built or sold"
  • "configuration user": "a person who uses a computer to configure an end-product, based on a pre-existing system definition"

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper. A previous IPR petition by Ford on the ’651 patent (IPR2016-01014) was denied at institution.
• Petitioner asserted that the denial was based on a procedural failure to establish that the primary prior art reference was a "printed publication." The Board's decision never reached the substantive merits of the obviousness arguments. Therefore, invoking §325(d) would be inappropriate as Petitioner was not using a prior decision as a "roadmap" to correct substantive deficiencies.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-14 and 60-72 of the ’651 patent as unpatentable.