Paper 24
`Date: January 27, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`1 This order addresses a similar issue in the two cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
`
`

`

`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
`Versata Development Group, Inc. (“Patent Owner”) requests rehearing
`
`(Paper 20, Reh’g Req.2) of the Order mailed December 20, 2013 (Paper 19;
`“Order”) providing guidance regarding a motion to amend. The request for
`rehearing is denied. 3
`
`
`
`BACKGROUND
`The Order provided guidance regarding a motion to amend, explaining,
`among other things, that 37 C.F.R. § 42.20 places the burden on a patent owner to
`show a patentable distinction of each proposed substitute claim over the prior art
`known to the patent owner. Order 3-4 (explaining that the guidance provided in
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11,
`2013) applies to a covered business method patent review.) Patent Owner seeks
`withdrawal of the Order and entry of a substitute order that clarifies that a motion
`to amend need only address the § 101 ground of unpatentability involved in this
`trial, and need not show that the proposed substitute claims are patentable over
`prior art. Reh’g Req. 2.
`
`ANALYSIS
`Patent Owner argues that no statute or rule requires a Patent Owner to show,
`in a motion to amend, how the newly proposed claims are patentable over prior art
`known to the Patent Owner. Reh’g Req. 3-5. Specifically, Patent Owner disagrees
`that 37 C.F.R. § 42.20 places the burden on a patent owner to show a patentable
`distinction of each proposed substitute claim over the prior art known to the patent
`owner. Id. 6. Patent Owner’s arguments are not persuasive. As explained in the
`
`
`2 References are made to papers of record in CBM2013-00017.
`3 The Order was not a decision, but guidance provided to the parties. Accordingly,
`rehearing is not appropriate. See 37 C.F.R. 42.71(d) (A party dissatisfied with a
`decision may file a request for rehearing, without prior authorization from the
`Board). We nonetheless address the request on the merits.
`2
`
`
`

`

`
`
`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
`Order, a motion to amend is a motion filed under 37 C.F.R. § 42.20 and thus is
`subject to the requirements of that rule. Order 4. The rule includes that “[t]he
`moving party has the burden of proof to establish that it is entitled to the requested
`relief.” 37 C.F.R. § 42.20(c).
`A covered business method patent review is not a patent examination
`proceeding or a patent reexamination proceeding. Like an inter partes review, a
`covered business method patent review is more adjudicatory than examinational in
`nature. See, e.g., Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
`2013). A proposed substitute claim, in a motion to amend, is not entered
`automatically and then examined. If a patent owner’s motion to amend is granted,
`the claim will be added directly to the patent, without examination. In that regard,
`the motion to amend is not a rebuttal to an Office Action, as though the proceeding
`is a patent examination or a reexamination. In the context of a motion to amend, it
`is the patent owner that seeks entry for its proposed new claims. A patent owner
`must set forth sufficient reasoning and evidence to show that it is entitled to those
`claims by showing that its proposed new claims are patentable over prior art. For
`these reasons, we are not persuaded by Patent Owner’s argument that 37 C.F.R.
`§ 42.20 does not place the burden on a patent owner to show a patentable
`distinction of each proposed substitute claim over the prior art known to the patent
`owner.
`Patent Owner argues that “the Order does not address whether Petitioner in
`this case would be prevented by 35 U.S.C. § 325(e)(1) and AIA § 18(a)(1)(D) from
`later asserting invalidity of the amended claims over the prior art that would be
`brought into trial.” Id. at 8. The Order provided guidance to the parties regarding
`a motion to amend that the Patent Owner may file in this proceeding. Patent
`Owner has not shown that the Board abused its discretion in not providing
`
`3
`
`
`

`

`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
`
`guidance on hypothetical events that may occur after this proceeding concludes. In
`other words, Patent Owner seeks an advisory opinion from the Board based on
`hypothetical events that may or may not occur upon conclusion of this trial. The
`Board declines to provide such an advisory opinion.
`Patent Owner argues that the guidance provided in the Order “does not
`circumscribe whether the ‘prior art known to the patent owner’ includes only prior
`art authorized by AIA § 18(a)(C), or whether ‘prior art known to the patent owner’
`includes prior art outside of the statutory bounds.” Id. at 9. The Order provided
`guidance and stated that 37 C.F.R. § 42.20 places the burden on the patent owner
`to show that it is entitled to its proposed claims, and thus show a patentable
`distinction of each proposed substitute claim over the prior art known to the patent
`owner. Patent Owner is correct that the guidance provided in the Order did not
`circumscribe the prior art to that authorized by AIA § 18(a)(C). See 35 U.S.C.
`§ 328 (“[T]he Patent Trial and Appeal Board shall issue a final written decision
`with respect to the patentability of any patent claim challenged by the petitioner
`and any new claim added under section 326(d)”). In addition, this argument is
`moot, because Patent Owner filed a motion to amend, but did not account for any
`prior art known to it. See, e.g., Paper 22 at 1.
`Patent Owner argues that limiting Patent Owner’s motion to amend to the
`§ 101 grounds of unpatentability involved in the trial would not prejudice
`Petitioner in any way. Id. at 10. We disagree. The Office would not want to grant
`a motion to add claims to a patent where such claims have not been demonstrated
`to be patentable over prior art. To do otherwise would not serve the interests of the
`Petitioner in this case or the public in general.
`Lastly, Patent Owner argues that the Order is in direct contrast to an order
`made in LinkedIn Corp. v. AvMarkets, Inc., CBM2013-00025, Paper 18. Id. at 12-
`
`4
`
`
`

`

`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
`
`13. We disagree. The order in LinkedIn provided examples of what is required for
`a motion to amend. See, e.g., CBM2013-00025, Paper 18 at 3 (“For example, a
`motion to amend must explain in detail,” etc.). The guidance was not exhaustive
`of every requirement a patent owner must show with respect to a motion to amend
`as Patent Owner appears to suggest. The LinkedIn order is consistent with the
`Order because it refers to the Idle Free decision (IPR2012-00027, Paper 26 (June
`11, 3013)) for guidance “on the requirements for a motion to amend.” Id.
`For all of the above reasons, Petitioner’s Request for Rehearing is denied.
`
`
`
`For PETITIONER:
`Keith Broyles
`keith.broyles@alston.com
`
`Jason Cooper
`jason.cooper@alston.com
`
`David Frist
`David.Frist@alston.com
`
`For PATENT OWNER:
`
`Kent Chambers
`kchambers@tcchlaw.com
`
`David O’Brien
`david.obrien.ipr@haynesboone.com
`
`
`
`5
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