CBM2013-00017, Paper 36
`
`Trials@uspto.gov
`
`
` CBM2013-00018, Paper 36
`
`Tel: 571-272-7822
` Entered: April 25, 2014
`
`
`
`
`
`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 B1)
`CBM2013-00018 (Patent 7,426,481 B1)1
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`1 This order addresses similar issues 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.
`
`
`
`Trials@uspto.gov
`
`
` CBM2013-00018, Paper 36
`
`Tel: 571-272-7822
` Entered: April 25, 2014
`
`
`
`
`
`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 B1)
`CBM2013-00018 (Patent 7,426,481 B1)1
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`1 This order addresses similar issues 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)
`
`
`On April 22, 2014, a conference call was held between counsel for the
`
`respective parties and Judges Medley, Blankenship, and Turner. A number
`
`of issues were discussed and we address each issue in turn.
`
`
`
`Proper procedure for requesting a conference call
`
`
`
`The parties were reminded of the proper procedure for requesting a
`
`conference call and the appropriate content of any email filed with the Board
`
`regarding a conference call. In particular, an email requesting a conference
`
`call should copy the other party to the proceeding, indicate generally the
`
`relief being requested or the subject matter of the conference call, state
`
`whether the opposing party opposes the request, and include times when all
`
`parties are available. Emails regarding a conference call should not include
`
`arguments. See Technical issue 3 on the Board’s website
`
`(http://www.uspto.gov/ip/boards/bpai/prps.jsp). During the conference call,
`
`the particular deficiencies were discussed, along with the potential
`
`consequences for any future abuse of the process. Exhibit 2010 at 3-5.
`
`
`
`Motion to Strike
`
`Patent Owner requested authorization to file a motion to strike.
`
`Specifically, Patent Owner seeks to strike two declarations made by Philip
`
`Greenspun (Exhibits 1017 and 1018 in both CBM2013-00017 and -00018)
`
`and the Petitioner’s reply (CBM2013-00017, Paper 30 and CBM2013-
`
`00018, Paper 26). According to Patent Owner, Exhibit 1017, and the
`
`Petitioner’s reply relying on Exhibit 1017, exceed the scope of the reply
`
`under 37 C.F.R. § 42.23(b). In addition, Patent Owner argued that the filing
`
`of Exhibits 1017 and 1018 was in violation of 37 C.F.R. § 42.223, which
`
`2
`
`
`
`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`requires a party to seek prior authorization before filing supplemental
`
`information. Petitioner opposed the request.
`
`Patent Owner’s request to file a motion to strike Exhibit 1017,
`
`Exhibit 1018, and the Petitioner’s reply is denied. As explained during the
`
`call, whether a reply contains arguments or evidence that is outside the scope
`
`of a proper reply under 37 C.F.R. § 42.23(b) is left to the determination of
`
`the Board. The Board will determine whether a reply and evidence are
`
`outside the scope of a proper reply and evidence when the Board reviews all
`
`of the parties’ briefs and prepares the final written decision. If there are
`
`improper arguments and evidence presented with a reply, the Board may
`
`exclude the reply and related evidence, for example. For all of these
`
`reasons, the Board will take under consideration any alleged violations in
`
`due course with respect to Petitioner’s reply and Exhibit 1017, upon
`
`considering the record at the end of the trial.
`
`As explained by Patent Owner, Exhibit 1018 is relied on by the
`
`Petitioner in connection with its opposition to Patent Owner’s motion to
`
`amend. However, a Petitioner may present evidence to rebut arguments and
`
`evidence presented by Patent Owner with respect to a motion to amend and,
`
`therefore, such evidence would not be considered “supplemental
`
`information” and Patent Owner did not articulate a persuasive reason why
`
`Exhibit 1018 is supplemental information under 37 C.F.R. § 42.223.
`
`
`
`Motion for observation
`
`As discussed, Patent Owner is permitted to cross-examine reply
`
`declarants, and if necessary, Patent Owner may file a motion for observation
`
`regarding cross-examination of a reply witness during DUE DATE 4. As
`
`3
`
`
`
`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`noted, in the Scheduling Order (CBM2013-00017, Paper 9; CBM2013-
`
`00018, Paper 9), a motion for observation on cross-examination is a
`
`mechanism to draw the Board’s attention to relevant cross-examination
`
`testimony of a reply witness. The observation must be a concise statement
`
`of the relevance of precisely identified testimony to a precisely identified
`
`argument or portion of an exhibit (including another part of the same
`
`testimony). An observation is not an opportunity to raise new issues, to re-
`
`argue issues, or to pursue objections. Each observation should be in the
`
`following form:
`
`In exhibit ___, on page ___, lines ___, the witness testified ___.
`That testimony is relevant to the ____ [stated or argued] on
`page ___, lines ___ of ___. The testimony is relevant because
`___.
`
`
`Each observation should not exceed one short paragraph. The Board
`
`may decline consideration or entry of argumentative observations. A motion
`
`for observation is limited to 15 pages. Although Petitioner argued that
`
`Patent Owner’s motion for observation should be limited to 5 pages,
`
`Petitioner did not provide a persuasive reason for deviating from the normal
`
`procedure. Accordingly, Patent Owner’s motion for observation due at DUE
`
`DATE 4 is limited to 15 pages. Petitioner may file a response by DUE
`
`DATE 5, limited to 15 pages.
`
`
`
`Patent Owner’s Reply exceeds the page limit
`
`Lastly, Petitioner correctly pointed out that Patent Owner’s Reply
`
`filed in each proceeding (CBM2013-00017, Paper 35 and CBM2013-00018,
`
`Paper 35) exceeds the page limit for replies, because the reply includes
`
`4
`
`
`
`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`single-spaced footnotes in violation of 37 C.F.R. §§ 42.6 and 42.24. Patent
`
`Owner is authorized to file a substitute reply, in each proceeding, for the sole
`
`purpose of meeting the page limit. No other changes are authorized.
`
`It is
`
`ORDERED that Patent Owner’s request to file a motion to strike is
`
`denied; and
`
`FURTHER ORDERED that Patent Owner is authorized to file, in
`
`each proceeding, a motion for observation on cross-examination by DUE
`
`DATE 4 consistent with this order;
`
`FURTHER ORDERED that Petitioner is authorized to file, in each
`
`proceeding, a response to any motion for observation by DUE DATE 5
`
`consistent with this order; and
`
`FURTHER ORDERED that Patent Owner is authorized to file, in
`
`each proceeding, a substitute reply consistent with this order.
`
`5
`
`
`
`
`
`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`For PETITIONER:
`
`Ketith 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@haynesboone.com
`
`John Russell Emerson
`Russell.ermerson@haynesboone.com
`
`
`
`6
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