• SAP America, Inc. v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Jun 11, 2013 · CBM2012-00001 · APJ Michael P Tierney · CBM · Final written decision

  Claims 17 and 26–29 are unpatentable under § 101 because they claim abstract pricing and hierarchy concepts without meaningful limitations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “SAP, as petitioner, bears the ultimate burden of proof that Versata’s claims are unpatentable under § 101. To place SAP’s and Versata’s contentions in context, we begin our analysis by first discussing our construction of the challenged claims. Bancorp Serv., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary— to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “The parties’ experts disagree as to whether the appended steps are merely routine, conventional steps or reflect meaningful limitations. Dr. Siegel, SAP’s expert, testifies that besides the abstract ideas, the claims merely recite routine, conventional activities. Ex. 1005, ¶ 49.19 In contrast, Dr. Liebich, Versata’s expert, testifies that the SAP R/3 pricing technology available at the time of the invention did not practice the combination of steps (storing, retrieving, sorting, eliminating, and determining) recited in the claims. Ex. 2091, ¶ 62. Dr. Liebich further testifies that he was not aware of any pricing technology in the marketplace at that time that performed the combination of steps. Id. Patent eligibility is distinct from the question of whether or not the claims recite subject matter that was not in the marketplace at the time of the invention. Flook, 437 U.S. at 593 (“[Section 101] does not involve the familiar issues of novelty and obviousness that routinely arise under §§ 102 and 103.”).20 We agree with SAP that Versata and Dr. Liebich fail to establish that the additional “specific” steps that are appended to the abstract idea provide meaningful limitations. The contention that the combination of the abstract idea and the specific steps represents an improvement in marketplace technology does not demonstrate that the additional steps are anything other than conventional, routine steps that are a consequence of implementing the abstract idea. Specifically, the Court in Flook held that a claim for an “improved” method is” slip op. at 31

  • Skill levelOther

    “after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with SAP that claim 17 does not itself impose a temporal limitation on when the pricing information is sorted. As SAP contends, Versata’s arguments and expert testimony as to what is “generally” the case do not demonstrate that Versata sought to limit claim 17 in the way that claim 1 expressly was limited. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1314 (Fed. Cir. 2003) (holding that similar language did not require separate and consecutive performance of various steps). Versata contends that the specification demonstrates that sorting must occur after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  Patent outcomesUS 6,553,350 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Phillips
  Patents in suitUS 6,553,350

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