Configit AS v. Versata Development Group Inc

1. Case Identification

• Case #: IPR2021-01055
• Patent #: 6,836,766
• Filed: June 14, 2021
• Petitioner(s): Configit A/S
• Patent Owner(s): Versata Development Group, Inc.
• Challenged Claims: 1-5 and 9-19

2. Patent Overview

• Title: Rule Based Configuration Engine for a Database
• Brief Description: The ’766 patent describes a method for testing a rule-based product configuration system. The method involves entering a test case to change a product configuration, processing the test case against established rules to detect configuration errors, and generating explanation data for any errors found.

3. Grounds for Unpatentability

Ground 1: Claims 1, 9-10, 14, and 19 are obvious over Oracle1 in view of Oracle2

• Prior Art Relied Upon: Oracle1 (Oracle Configurator Developer 11i User's Guide, Apr. 2000) and Oracle2 (Oracle Configurator Configuration Interface Object (CIO) Developer's Guide, Mar. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oracle1, a user guide for a commercial product configurator, taught the core elements of independent claim 1. Oracle1 disclosed a "Test/Debug" module where user selections (a test case) are automatically validated against predefined configuration rules. If a selection violates a rule, the system displays a message explaining the violation, which constitutes the claimed "explanation data." Petitioner contended that Oracle2, a companion developer's guide, explicitly taught that product configurations are stored as electronic data in memory as a "Configuration object," which could be saved to and restored from a database, thus satisfying the preamble limitation that the configuration is "stored as electronic data."
  • Motivation to Combine: A POSITA would combine Oracle1 and Oracle2 because they were companion manuals for the same Oracle Configurator product, were intended to be used together, and explicitly referred to one another.
  • Expectation of Success: Since the manuals described a single, integrated commercial product, a POSITA would have a high expectation of success in using their combined teachings.

Ground 2: Claims 15 and 16 are obvious over Oracle1 and Oracle2 in further view of SalesPlus

• Prior Art Relied Upon: Oracle1, Oracle2, and SalesPlus (Reference Guide for the beologic salesPLUS Product Configurator, 1995).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination for claim 14, arguing that SalesPlus taught the additional limitations of dependent claims 15 and 16. Petitioner asserted that SalesPlus explicitly disclosed "determining whether the product is selectable" (claim 15) based on prior user selections. SalesPlus provided an example where a "Turbo Cabriolet" model is determined to be an "Impossible Selection" due to earlier choices, thereby "reporting the state of the product as not selectable" (claim 16).
  • Motivation to Combine: A POSITA would combine SalesPlus's teachings with the Oracle system to solve the known industry problem of configurators creating invalid or un-selectable product combinations, which had significant financial costs. Improving the Oracle testing process with SalesPlus's selectability check would be a logical step to ensure configurator rules were working correctly.
  • Expectation of Success: The functionality was already implemented in the SalesPlus configurator, so a POSITA would have viewed its integration into the Oracle system as a natural extension with a reasonable expectation of success.

Ground 4: Claims 2 and 18 are obvious over Oracle1 and Oracle2 in further view of Memon

• Prior Art Relied Upon: Oracle1, Oracle2, and Memon ("Automated Test Oracles for GUIs," Nov. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground argued that the limitations of claim 2—initializing the system with a "part state" and "listening" for a state change event that matches that initialized state—described a well-known software testing paradigm known as a "test oracle," which Memon taught. Petitioner contended Memon, while focused on graphical user interfaces (GUIs), was analogous art and described a method of initializing a system with an "expected state," executing an action, and using an "execution monitor" (a listener) to compare the resulting "actual state" with the initial "expected state."
  • Motivation to Combine: A POSITA would recognize that testing GUIs and product configurators are similar problems involving event-driven systems. A POSITA would be motivated to incorporate Memon's more robust test oracle methodology into the Oracle system to detect subtle rule-coding errors (e.g., extraneous rules causing unintended part selections) that the basic validation in Oracle1 might not catch.
  • Expectation of Success: Oracle2 taught extending the configurator's features via an API that included an "event listener" interface. A POSITA would have recognized this as a straightforward path to implement Memon's monitor/verifier functionality, making the combination a routine modification with a high expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 5) against claims 3-5 and 11-13, 17 based on further combinations including Yu (a 1998 article on the salesPLUS system). These grounds relied on similar motivations to add more sophisticated error detection and explanation capabilities—such as those based on a "look ahead process" or identifying parts in contradictory states—to the core Oracle testing framework.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The core arguments were that the patent was not meaningfully examined against relevant prior art during prosecution (Factor 6), the parallel district court litigation was in a very early stage with no scheduling order issued (Factors 2 and 3), and Petitioner stipulated to not pursue the IPR grounds in district court if review is instituted, mitigating concerns of parallel litigation (Factor 4).

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 9-19 of Patent 6,836,766 as unpatentable.