Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`VOLUSION, INC.
`Petitioner
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`v.
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`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
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`AND
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`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
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`Case CBM2013-00017
`Patent 6,834,282
`_____________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`Identification of Objections; Compliance with Office Trial Practice Guide
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`Objections to evidence were timely served on Petitioner on March 26, 2014, within 5
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`business days of service of the evidence. 37 C.F.R. § 42.64(b)(2). The objections are filed as
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`Exhibit 2011. Per the Office Patent Trial Practice Guide, each section of the instant motion: (1)
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`identifies where in the record the objection originally was made; (2) identifies where in the record
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`the evidence sought to be excluded was relied upon by Petitioner; (3) addresses objections to
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`exhibits in numerical order; and (4) explains each objection. Office Patent Trial Practice Guide
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`(“OPTPG”) 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
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`II.
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`Exhibit 1017 Should Be Excluded For Petitioner’s Failure To Comply With 37 C.F.R. §
`42.2231
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`Rule 42.223 permits a petitioner to submit supplemental information and evidence after trial
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`has been instituted, upon a proper request for authorization to file a motion to submit supplemental
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`information. 37 C.F.R. § 42.223, see also 35 U.S.C. § 326(a)(3). Supplemental information, as de-
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`fined by the Office’s comments on substantive rulemaking, includes “evidence relevant to a claim for
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`which the trial has been instituted.” OPTPG, 77 Fed. Reg. at 48708 (Response to Comment 93).
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`Undoubtedly, Exhibit 1017 is “evidence relevant to a claim for which the trial has been
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`instituted,” as Dr. Greenspun discusses his opinion as to the patentability of claims 11-20 of the
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`‘282 Patent, all of which were challenged, and all of which were instituted for trial. However, as
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`1 Patent Owner objected to Exhibit 1017 on the basis of its failure to comply with § 42.223 in Exh.
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`2011 at 2. Exhibit 1017 was relied upon by Petitioner throughout “Petitioner Volusion, Inc.’s
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`Reply to Patent Owner’s Response”, Paper No. 30, filed March 19, 2014.
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`–1–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`Exhibit 1017 was not submitted with the Petition, it is by definition “supplemental information.”
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`Petitioners are encouraged to “set forth their best grounds of unpatentability and
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`supporting evidence in their petitions” and if they have not done so, they must file a request for
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`supplemental information. OPTPG, 77 Fed. Reg. at 48708, Response to Comment 92. According
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`to Rule 42.223(a), a request for authorization to file a motion to submit supplemental information
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`must be made within one month of the institution of trial. But Petitioner made no request for
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`authorization to file a motion to submit supplemental information within the one-month period or,
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`indeed, at any point in the trial. After one month, Petitioner was still able to submit supplemental
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`information; however, under Rule 42.223(b), such late submission must be by motion authorized
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`by the Board and such motion “must explain why the information reasonably could not have been
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`obtained earlier,” and consideration of such supplemental information must be “in the interests-of-
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`justice.” OPTPG, 77 Fed. Reg. at 48708, Response to Comment 92; see also 37 C.F.R. § 42.223.
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`Petitioner has neither made the required request for authorization, nor filed a grantable motion, nor
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`offered the required explanation or showing.
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`Exhibit 1017 is therefore late supplemental information, filed without any proper request to
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`submit such information, in clear violation of 37 C.F.R. § 42.223. The Office’s stated purpose of §
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`42.223, and in particular, of the one month after institution time limit, is to provide the patent
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`owner “sufficient time to address any new information submitted by the petitioner.” OPTPG, 77
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`Fed. Reg. at 48708, Response to Comment 91. If Petitioner had properly included Exhibit 1017 at
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`the time of the Petition, or included it as timely-submitted supplemental information, Patent Owner
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`–2–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`would have its full 80 page Response and accompanying evidence to rebut Petitioner’s positions.
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`But because Petitioner (perhaps deliberately) failed to follow the Office’s rules, Patent Owner has
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`had no time or opportunity to substantively address the only declaration evidence presented by
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`Petitioner in support of its case, namely the new information contained in Dr. Greenspun’s
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`declaration that accompanied Petitioner’s Reply. Specifically, Patent Owner is not afforded any
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`substantive response, and cannot submit any supporting evidence, after Petitioner’s Reply.
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`Enforcement of § 42.223 by excluding Exhibit 1017 is therefore entirely consistent with the
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`Office’s rulemaking and the very purpose of the statute and implementing regulation. Failure to
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`enforce § 42.223 is highly prejudicial to Patent Owner, implicates substantive and procedural due
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`process rights, and flies in the face of the statute2, the very regulations3 established by the then
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`Director in furtherance of his statutory obligation, and the then Director’s responses to comments4
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`2 35 U.S.C. § 326(a)(3) (“The Director shall prescribe regulations— … establishing procedures
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`for the submission of supplemental information after the petition is filed.”
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`3 42 C.F.R.. § 42.223(b).
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`4 77 Fed. Reg. 48707-08 (Comments 91, 92 and 93); see specifically,
`Comment 91: … According to the comments, the petition should disclose the entirety of
`the petitioner’s case, and the comments also expressed concerns that the petitioner may
`intentionally hold back some evidence which would be unfair to the patent owner. …
`Response: Since the request must be made within one month of the date the trial is
`instituted, the patent owner will have sufficient time to address any new information
`submitted by the petitioner, except in the situation where the party satisfies the
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`–3–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`of the practicing bar (published in the Federal Register) on adoption of those regulations as Final
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`Rules. Moreover, by filing its supplemental declaratory evidence outside the established procedural
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`safeguards of § 42.223, Petitioner subverts the motion process by which Patent Owner is afforded
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`an opportunity to oppose the late submission of supplemental information. Thus, it is Petitioner’s
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`failure that has necessitated the present motion by Patent Owner on the eve of oral hearing.
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`Further, enforcing § 42.223 by excluding Exhibit 1017 would not prejudice Petitioner. The
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`Office Patent Trial Practice Guide is clear that “the petition must…be accompanied by the evidence
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`the petitioner seeks to rely on.” OPTPG, 77 Fed. Reg. at 48756; see also at 48762 (“proceedings
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`begin with the filing of a petition…and supporting evidence…”; at 48763 (“petition lays out the
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`petitioner’s grounds for review and supporting evidence…”). Petitioner is on record as stating it
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`“didn’t rely on expert testimony at the outset of this case frankly because it didn’t need to.” Exh.
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`2010 at 16:20-25. It is therefore logical to conclude that the documents submitted with the
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`Petition constitute the “best…supporting evidence” available to Petitioner, and thus, if Exhibit
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`1017 is excluded, Petitioner will suffer no prejudice, as its best supporting evidence submitted with
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`requirement of §…42.223(b). The Office understands the concerns related to late
`submissions of supplemental information. Therefore, the Office has modified the
`proposed provisions set forth in §…42.223(b) to provide that any request not made
`within one month must show why the information reasonably could not have been
`obtained earlier, and that consideration for the supplemental information would be in the
`interests-of-justice.”
`77 Fed. Reg. 48707 (emphasis added).
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`–4–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`the Petition will remain in the proceeding. Accordingly, Exhibit 1017 should be excluded.
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`III.
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`Exhibit 1017 Is Not Proper Reply Evidence5
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`Even assuming Exhibit 1017 is proper under 37 C.F.R. § 42.223, which Patent Owner
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`vigorously contests and does not concede, Exhibit 1017 utterly fails to comply with 37 C.F.R. §
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`42.23 and the Office Patent Trial Practice Guide, II.I, titled “Petitioner Reply to Patent Owner
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`Response and Patent Owner Reply to Opposition to Amend.”6 77 Fed. Reg. at 48767.
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`The Office Patent Trial Practice Guide is clear: “[a] reply may only respond to arguments
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`raised in the corresponding opposition…a reply that raises a new issue or belatedly presents
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`evidence will not be considered and may be returned.” OPTPG, 77 Fed. Reg. at 48767. Moreover,
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`the Office Patent Trial Practice Guide provides examples of indications that a new issue has been
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`raised in a reply: “new evidence necessary to make out a prima facie case for the…unpatentability
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`of an original…claim” and “new evidence that could have been presented in a prior filing.” Id.
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`Despite making numerous allegations of fact in the Petition, Petitioner included no declaration
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`evidence at the filing of its Petition. The Greenspun declaration belatedly presented with the Reply
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`5 An assertion that evidence is belatedly presented is proper in a Motion to Exclude. See
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`CBM2013-00002, Paper No. 35, pp. 2-3; IPR2013-00041, Paper No. 44, p. 2.
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`6 Patent Owner objected to Exhibit 1017 on the basis of its failure to comply with 37 C.F.R. §
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`42.23 and Section II.I of the OPTPG in Exh. 2011 at 2-3. Exhibit 1017 was relied upon by
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`Petitioner throughout “Petitioner Volusion, Inc.’s Reply to Patent Owner’s Response”, Paper No.
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`26, filed March 19, 2014.
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`–5–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`contains statements that correspond to both of the example indications provided by the Office
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`Patent Trial Practice Guide, and accordingly, the evidence and Reply raise a new issue and belatedly
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`present evidence. Specific examples are provided below.
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`A.
`The Declarant’s Assertion of the “Abstract Idea” Is New and Could Have Been
`Presented in a Prior Filing
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`Petitioner’s § 101 challenge of the ‘282 Patent is based on its theory that the claims seek
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`to claim the application of an abstract idea. Petition, p. 21. In its opening Petition, Petitioner
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`proposed a number of abstract ideas as allegedly preempted by the ‘282 Patent claims. However,
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`Dr. Greenspun’s declaration analyzes none of Petitioner’s originally-proposed abstract ideas. At
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`paragraph 71 of his declaration, Dr. Greenspun defines the abstract idea of the ‘282 patent claims
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`as “at least the following: (1) organizing product-related data to facilitate catalog browsing by
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`representing a plurality of items in a database hierarchically and (2) an organization that uses
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`logical and constraint-based representations of the items.” Exhibit 1017, ¶ 71.
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`The abstract idea proposed by Dr. Greenspun cannot be found in the Petition or any of
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`Petitioner’s earlier filings. Dr. Greenspun confirmed this:
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`Q. The abstract idea that you articulated in Paragraph 71, was that the same abstract idea
`articulated in Volusion’s petition?
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`A. I don’t think so, no.
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`Exh. 2009, 108:14-19.
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`Truly, there is no clearer example of a belatedly presented “new issue.” Dr. Greenspun
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`–6–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`admits that his proposed abstract idea was not found in the Petition. It cannot be found in any prior
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`paper filed in this proceeding. It first appears in his declaration, belatedly presented with
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`Petitioner’s Reply. At least on this basis, Exhibit 1017 should be excluded for failing to comply with
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`37 C.F.R. § 42.23.
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`Though the above admission is clearly egregious, and the evidence plainly prejudicial, Dr.
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`Greenspun further admits that his abstract idea even deviates from the Board’s abstract idea upon
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`which trial was instituted:
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`Q. Now, in your abstract idea you've added this subpart 2, an organization that uses logical and
`constraint-based representations of the items, correct?
`A. Yes.
`Q. And that -- that's not in the Board's articulation of the abstract idea, is it?
`A. No.
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`Exh. 2009, 111:20-112:2.
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`Again, Dr. Greenspun admits that the issue of the abstract idea allegedly embraced by the
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`claims is newly-presented in his declaration. The abstract idea proposed by Dr. Greenspun, and not
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`any other abstract idea, is the very foundation for his declaration. Exh. 2009, 116:22-25. Patent
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`Owner never had an opportunity to address this new issue, and never will have an opportunity. Dr.
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`Greenspun further admits that his abstract idea is different from that analyzed by Dr. Nettles, and
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`thus, his declaration is far more than a mere rebuttal to Dr. Nettles. Exh. 2009, 108:7-13. Dr.
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`Greenspun’s declaration should be excluded on at least this basis.
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`Not only is Dr. Greenspun’s declaration the first time such an abstract idea was proposed,
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`–7–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`but also, Dr. Greenspun admitted that it could have been presented earlier. During his deposition,
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`Dr. Greenspun confirmed that his definition of the abstract idea would have been the same had he
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`reviewed the patent in 2013 at the time of the Petition’s filing. Exh. 2009, 114:25-115:8. But
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`instead of properly including such evidence at that point, and perhaps now acknowledging a
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`weakness in its case, Petitioner waited to present a new issue and accompanying factual support
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`until it belatedly did so with the Reply. That delay severely prejudices Patent Owner. As detailed
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`above, Patent Owner has no substantive response available to Petitioner’s late factual evidence.
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`Petitioner offers no justification for the failure to present such evidence with the Petition. If
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`Petitioner’s late-submitted evidence is permitted to stay in the record, the entire proceeding will be
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`unfairly biased in favor of the Petitioner. While the Board is quick to quote its § 42.1(b) mandate
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`for “just, speedy and inexpensive resolution,” Patent Owner respectfully notes that the first of these
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`mandates is just resolution.
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`As stated above, Petitioner’s entire invalidity case rests on the theory that the claims of the
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`‘282 Patent claim an abstract idea. Petition, p. 21. Thus, the definition of that abstract idea, and
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`factual support for that abstract idea, is “necessary to make out a prima facie case for
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`the…unpatentability of an original…claim.” OPTPG, 77 Fed. Reg. at 48767. Including a new
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`abstract idea at the Reply stage “belatedly presents evidence” that “could have been presented in
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`a prior filing,” at a point where Patent Owner cannot respond. Id. Moreover, as Dr. Greenspun
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`confirmed that his definition of the abstract idea would have been the same at the filing of the
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`Petition, his declaration is “new evidence that could have been presented in a proper filing” earlier
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`–8–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`in the present proceeding and, in any case, is not proper rebuttal evidence.
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`Exclusion of Dr. Greenspun’s declaration for introducing a new abstract idea and analyzing
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`the claims based on that abstract idea would also be consistent with this panel’s prior statements in
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`a related proceeding. For example, the Board has stated a goal of minimizing the issues for trial
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`and oral hearing. Requiring the parties to analyze and discuss a third, new abstract idea only
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`complicates and adds issues to be discussed at the oral hearing. Exclusion of Exhibit 1017,
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`however, would minimize the issues in this trial, and is appropriate in this situation.
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`As Dr. Greenspun’s definition of the abstract idea introduces a new issue too late in the
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`proceeding, and as his definition is inextricable from the remainder of his declaration, Exhibit 1017
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`as a whole should be excluded. At the very least, paragraph 71 of Exhibit 1017 should be
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`excluded.
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`The Level of Ordinary Skill in the Art is Belatedly Presented Evidence
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`B.
`Resolving the issue of the level of ordinary skill in the art at the time of the invention is
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`necessary to the determination of what abstract idea is allegedly preempted by a claim. See, e.g.,
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`Ultramercial v. Hulu, 722 F.3d 1335, 1347 (Fed. Cir. 2013) (stating that an understanding of what
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`existed in the mind of those skilled in the art during the relevant time frame is relevant to the
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`abstract idea exception to patent eligibility). Moreover, in Mayo, the Court specified that the
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`perspective of “those in the field” was relevant to what was “well-understood, routine [and]
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`conventional activity.” Mayo v. Prometheus, 132 S.Ct. 1289, 1298 (2013). Accordingly, the
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`definition of a person of ordinary skill in the art is evidence necessary to make out a prima facie
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`–9–
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`case for the unpatentability of the claims.
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
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`Despite Petitioner’s allegation in the Petition as to what the abstract idea is, despite its
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`repeated statements that rely on the perspective of one in the relevant field (e.g., the Petition’s
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`assertions that the ’282 Patent claims add no more than “well-understood, routine, [and]
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`conventional activity”), and despite the frequent citations to Mayo, Petitioner did not see fit to
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`advance a proposed definition of what it believed to be a researcher or scientist in the field or one
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`of ordinary skill in the art. Nor does the Petition rely on any declaration testimony or other
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`evidence containing a discussion or proposal of the hypothetical level of ordinary skill in the art.
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`Instead, Dr. Greenspun belatedly asserts in his declaration accompanying the Reply, for the first
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`time, and in clear disregard of the Trial Guide’s guidance, the Petitioner’s proposed level of ordinary
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`skill in the art. Exh. 1017 ¶¶ 24, 26-30. The definition contained in Dr. Greenspun’s declaration
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`is therefore “new evidence necessary to make out a prima facie case for the unpatentability of an
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`original claim,” which “could have presented in a prior filing” (but was not), and is improper.
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`Petitioner may claim such testimony is proper rebuttal evidence, but its own declarant
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`contradicts such a theory. Dr. Greenspun testified that his proposed definition of the person of
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`ordinary skill in the art would have been the same had he provided his opinion when the ‘282
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`Patent issued. Exh. 2009, 56:22-57:1. Nor did Dr. Greenspun need to consult Dr. Nettles’
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`definition, as his declaration indicates that his definition of the person of ordinary skill in the art is
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`based on the patent alone. Exh. 1017, ¶ 24-30. Accordingly, at least paragraphs 24 and 26-30
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`of Exhibit 1017 should be excluded. Moreover, Patent Owner respectfully submits that, as Dr.
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`–10–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`Greenspun’s entire declaration rests on his definition of the person of ordinary skill in the art, his
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`declaration as a whole should be excluded as well.
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`As in the previous section, Petitioner would not be prejudiced by exclusion of its proposed
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`level of skill in the art. Dr. Greenspun himself testified that his opinions would be no different had
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`he applied Patent Owner’s timely-proposed level of skill in the art. Exh. 2009, 56:12-21.
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`If Dr. Greenspun’s declaration were truly a proper rebuttal to Dr. Nettles, he could have
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`applied Dr. Nettles’ level of skill in the art. He did not, and therefore, as his declaration rests on
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`this belatedly proposed level of ordinary skill in the art, Exhibit 1017 as a whole should be excluded
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`for belatedly introducing a new issue. At the very least, paragraphs 24 and 26-30 should be
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`excluded for introducing the new issue of the level of ordinary skill in the art.
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`Dr. Greenspun’s Pen and Paper Analysis Could Have Been Submitted Earlier
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`C.
`Dr. Greenspun dedicates a portion of his declaration to his opinion that claims 11-20 of the
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`‘282 Patent could be performed using a pen and paper. Exh. 1017, ¶¶ 73-93; Exh. 1020; Exh.
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`1021; Exh. 1022. This very same conclusion was included with the Petition: “claims 1-20…could
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`be done by an individual with a pen and paper.” Petition, p. 24. But at the Petition stage,
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`Petitioner: (1) only performed a cursory analysis, and did not address each claim individually, and
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`more importantly, (2) failed to submit any factual declaration support for these statements.
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`Again, perhaps realizing the weakness in its case, Petitioner chose to fill in the gaps it
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`created, and chose to belatedly substantiate its analysis with Dr. Greenspun’s declaration. Such
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`tactics and gamesmanship are manifestly prejudicial as Patent Owner has no opportunity during
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`–11–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`trial proceedings to substantively respond to late presented elements of Petitioner’s prima facie
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`case. To prevent this injustice, the Board should exclude Paragraphs 73-93 of Exhibit 1017.
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`On its face, it is clear that such evidence is both “new evidence necessary to make out a
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`prima facie case for the…unpatentability of an original…claim” and “new evidence that could have
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`been presented in a prior filing.” The pen and paper conclusion was included with the Petition to
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`make out a prima facie case for the unpatentability of claims 11-20. Indeed, the Institution Decision
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`relied on this analysis. Institution Decision, p. 14. Petitioner’s analysis for that conclusion,
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`however, did not follow until the Reply. Moreover, Dr. Greenspun explicitly admitted that such
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`evidence (i.e., paragraphs 73-93) would have been the same at the filing of the Petition. Exh.
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`2009, 121:4-122:4. Petitioner offers no excuse for the late submission of this evidence, nor is
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`there any excuse. Paragraphs 73 through 93 of Exhibit 1017, and Exhibits 1020-1022, are simply
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`late, and should be excluded.
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`IV.
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`Portions of Exhibit 1018 Should Be Excluded as Outside the Scope of a Proper Opposition
`to Patent Owner’s Motion to Amend7
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`Portions of Exhibit 1018, submitted to support Petitioner’s arguments in its Opposition to
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`Patent Owner’s Motion to Amend, exceed the scope of allowable evidence under the Rules and
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`7 Patent Owner objected to Exhibit 1018 on the basis of its failure to comply with 37 C.F.R. §
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`42.23 and Sections II.I and II.H of the OPTPG in Exh. 2011 at 4-5. Exhibit 1017 was relied upon
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`by Petitioner throughout “Petitioner Volusion, Inc.’s Opposition to Patent Owner’s Motion to
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`Amend”, Paper No. 28, filed March 19, 2014.
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`–12–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`Office Patent Trial Practice Guide. The comments on the Office’s substantive rulemaking state that,
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`in responding to proposed substitute claims, Petitioners are permitted to “supplement evidence
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`submitted with their petition to respond to new issues arising from proposed substitute claims.” 77
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`Fed. Reg. 48707, Response to Comment 86. The Office Patent Trial Practice Guide provides similar
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`guidance. OPTPG, 77 Fed. Reg. at 48767.
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`Dr. Greenspun’s statements in Exhibit 1018 do not respond to new issues arising from
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`Patent Owner’s proposed substitute claims. Rather, his opinions apply to both the original claims
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`and the proposed substitute claims, and are therefore not limited to the proper scope under the
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`rules and should be excluded.
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`For example, Dr. Greenspun introduces a new abstract idea allegedly embraced by the
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`claims in Exhibit 1018. Exh. 1018, ¶ 75. As stated above, this abstract idea cannot be found in
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`any of Petitioner’s earlier papers. Moreover, Dr. Greenspun does not specify that this opinion
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`applies only to the proposed substitute claims; his opinion appears to apply to both the original and
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`proposed substitute claims. Indeed, the text contained in paragraphs 74-76 of Exhibit 1018 is
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`nearly word-for-word identical to the text contained in paragraphs 70-72 of Exhibit 1017, Dr.
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`Greenspun’s Reply declaration, which addresses the original claims. Accordingly, Exhibit 1018 does
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`not discuss “new issues arising from proposed substitute claims;” the issues it belatedly addresses
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`are old issues.
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`Moreover, Petitioner did not provide any declaration evidence with the Petition, and thus,
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`Dr. Greenspun’s Exhibit 1018 is not a mere “supplement.” Rather, Exhibit 1018 sets out facts
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`–13–
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
`attempting to support a prima facie case of unpatentability of the original claims, and appears to be
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`a transparent attempt to introduce evidence relating to the original claims under the guise of a
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`proper opposition to a motion to amend. Accordingly, at least paragraphs 71, 75, and 76 of
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`Exhibit 1018 should be excluded.
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`Dr. Greenspun also discusses his proposed level of ordinary skill in the art in Exhibit 1018.
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`This too is not a new issue arising from the proposed substitute claims. As discussed above, the
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`level of skill in the art is necessary to an understanding of the abstract idea allegedly embraced by
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`the claims, and is necessary to a determination of what is “well-understood, routine, and
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`conventional.” Accordingly, such evidence would have been necessary at the Petition stage;
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`evidence on the level of ordinary skill at this stage does not respond to issues arising from the
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`proposed substitute claims.
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`Despite the fact that this is not a new issue arising from the proposed substitute claims, Dr.
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`Greenspun proposes a level of ordinary skill in the art in Exhibit 1018. Not only is this issue not
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`new, but also the text in paragraphs 24-29 of Exhibit 1018 and the text in paragraphs 23-30 of
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`Exhibit 1017 is nearly identical. Thus, the declaration is not merely responding to new issues, and
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`is not directed to any issue arising from the proposed substitute claims. As the sections are nearly
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`identical, and are apparently applicable to both the original and substitute claims, again, Exhibit
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`1018 appears to be a transparent attempt to belatedly buttress Petitioner’s prima facie case of
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`unpatentability of the original claims under the cover of an opposition to a motion to amend. Such
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`an attempt should be denied, and accordingly, paragraphs 23, 25, 26, 27, 28, and 29 of Exhibit
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`–14–
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`

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`1018 should also be excluded.
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`
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`Patent Owner’s Motion to Exclude
`CBM2013-00017 (Patent 6,834,282)
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`Moreover, in paragraphs 52, 54, and 55, Dr. Greenspun introduces his opinion of the
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`proper construction of the term “hierarchy” for the first time in this proceeding. However, the term
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`“hierarchy” is common to both the original and proposed claims, but Dr. Greenspun provided no
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`opinion as to the term earlier in the proceeding. Accordingly, paragraphs 52, 54, and 55 of Exhibit
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`1018 do not discuss “new issues arising from proposed substitute claims,” and should be
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`excluded.
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`V.
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`Conclusion
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`While Petitioner may be entitled to the “last word,” it is not entitled to the only word or to
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`maintain testimonial evidence in support of its substantive positions in secrecy until the last moment
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`when, immune from substantive rebuttal, it belatedly reveals such testimony with its Reply. Because
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`Petitioner’s evidence in Exhibit 1017 and Exhibit 1018 far exceeds the proper scope delineated by
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`the Rules and Office Patent Trial Practice Guide, Patent Owner respectfully requests that the
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`evidence be denied consideration and excluded. Patent Owner further requests that, even if the
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`Board does not consider Exhibit 1017 and Exhibit 1018 in the process of preparing the final written
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`decision, the Board decide the instant Motion to Exclude on the merits to provide clarity as to the
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`scope of the record on any subsequent appeal.
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`Dated: April 30, 2014
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`Respectfully submitted,
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`
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`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
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`–15–
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`