`
`
`
`
`Paper No.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
`
`AND
`
`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
`
`Case CBM2013-00017
`Patent 6,834,282
`_____________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION REGARDING CROSS-
`EXAMINATION OF PHILIP GREENSPUN
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`Pursuant to the Board’s Order – Conduct of the Proceedings issued April 25, 2014
`
`
`
`(Paper 36), Patent Owner submits the following Motion for Observation Regarding Cross-
`
`Examination of Philip Greenspun, Petitioner’s reply witness. The Declaration of Philip
`
`Greenspun, Ph.D. In Support of Volusion’s Reply to Patent Owner Response (Under 37
`
`C.F.R. § 1.68) was previously filed as Exhibit 1017. The transcript of Dr. Greenspun’s
`
`deposition was previously filed as Exhibit 2009. Citations to Exhibit 2009 are provided in
`
`page:line format.
`
`Observation 1:
`
`In Exhibit 2009, at 116:7-20, Dr. Greenspun testified that claim 11
`
`would not preempt all practical implementations of the Board’s abstract idea. This
`
`testimony is relevant because it confirms Dr. Nettles’ conclusions in at least paragraph 35 of
`
`Exhibit 2003. This testimony is also relevant because it contradicts the Board’s statements
`
`in the Institution Decision at least at page 15. This testimony is also relevant because it
`
`supports the Patent Owner’s argument that claim 11 is statutory subject matter. See e.g.,
`
`Patent Owner’s Response, p. 17.
`
`Observation 2:
`
`In Exhibit 2009, at 95:15-96:1, Dr. Greenspun testified that none of the
`
`embodiments explicitly taught by the ‘282 Patent Specification would not use a computer.
`
`This testimony is relevant because it supports Patent Owner’s conclusion that the method
`
`claims are incapable of being performed in the human mind or using pen and paper. See,
`
`e.g., Patent Owner Response at 29. This testimony is also relevant because it contradicts
`
`Petitioner’s position that claims 11-20 could be done by an individual with a pen and paper.
`
`
`
`–1–
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`Petition at 24. This testimony is also relevant because, prior to the cited portion, he testifies
`
`
`
`that “browsing,” as used in the ‘282 Patent, is broad enough to include browsing without a
`
`computer, for example, in Exhibit 2009 at 95:4-9. Thus, his testimony is internally
`
`inconsistent.
`
`Observation 3:
`
`In Exhibit 2009, at 14:7-18, Dr. Greenspun testified that his opinions
`
`that allege that certain claim elements of the ‘282 Patent would have been well-known,
`
`conventional, or routine would have been the same in 2001. This testimony is relevant to
`
`Petitioner’s position that the submission of Dr. Greenspun’s declaration complies with 37
`
`C.F.R. § 42.23(b), and is also relevant to Petitioner’s position and Dr. Greenspun’s position
`
`that Exhibit 1017 is a proper rebuttal to Dr. Nettles’ declaration. This testimony is also
`
`relevant to Patent Owner’s position that the submission of Dr. Greenspun’s declaration does
`
`not comply with 37 C.F.R. § 42.223.
`
`Observation 4:
`
`In Exhibit 2009, at 56:22-57:1, Dr. Greenspun testified that his opinion
`
`of the qualifications of a person of ordinary skill in the art (Exh. 1017, ¶ 29) would not have
`
`been different had he drafted his declaration when the ‘282 Patent issued in 2004. This
`
`testimony is relevant to Petitioner’s position that the submission of Dr. Greenspun’s
`
`declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to Petitioner’s position
`
`and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to Dr. Nettles’
`
`declaration. This testimony is also relevant to Patent Owner’s position that the submission
`
`of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`
`
`–2–
`
`
`
`
`
`
`
`Observation 5:
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`In Exhibit 2009, at 103:16-105:19, Dr. Greenspun testified that his
`
`
`
`statement that “an implementation of the hierarchy described in the ‘282 patent on a
`
`computer would be a well-known, routine, and conventional use of a general purpose
`
`computer” (Exh. 1017, ¶ 66) would have been the same at the filing of the Petition. This
`
`testimony is relevant to Petitioner’s position that the submission of Dr. Greenspun’s
`
`declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to Petitioner’s position
`
`and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to Dr. Nettles’
`
`declaration. This testimony is also relevant to Patent Owner’s position that the submission
`
`of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 6:
`
`In Exhibit 2009, at 114:25-115:8, Dr. Greenspun testified that his
`
`proposed abstract idea, articulated in paragraph 71 of his declaration (Exh. 1017, ¶ 71),
`
`would have been the same had he provided his opinion at the time of the Petition. This
`
`testimony is relevant to Petitioner’s position that the submission of Dr. Greenspun’s
`
`declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to Petitioner’s position
`
`and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to Dr. Nettles’
`
`declaration. This testimony is also relevant to Patent Owner’s position that the submission
`
`of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 7:
`
`In Exhibit 2009, at 120:12-122:4, Dr. Greenspun testified that his
`
`opinion that claims 11 through 20 could be performed using a pen and paper (see Exh.
`
`1017, ¶¶ 73-93) would have been the same had he provided his opinion at the time of the
`
`
`
`–3–
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`Petition. This testimony is relevant to Petitioner’s position that the submission of Dr.
`
`
`
`Greenspun’s declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to
`
`Petitioner’s position and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to
`
`Dr. Nettles’ declaration. This testimony is also relevant to Patent Owner’s position that the
`
`submission of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 8:
`
`In Exhibit 2009, at 126:11-127:1, Dr. Greenspun testified that his
`
`opinion regarding claim elements that would be well-known, routine, and conventional (see
`
`Exh. 1017, ¶¶ 73-93) would have been the same had he provided his opinion at the time of
`
`the Petition. This testimony is relevant to Petitioner’s position that the submission of Dr.
`
`Greenspun’s declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to
`
`Petitioner’s position and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to
`
`Dr. Nettles’ declaration. This testimony is also relevant to Patent Owner’s position that the
`
`submission of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 9:
`
`In Exhibit 2009, at 128:4-129:8, Dr. Greenspun testified that his
`
`opinion regarding claim limitations that would be well-known, routine, and conventional (see
`
`Exh. 1017, ¶¶ 94-103) would have been the same had he provided his opinion at the time of
`
`the Petition. This testimony is relevant to Petitioner’s position that the submission of Dr.
`
`Greenspun’s declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to
`
`Petitioner’s position and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to
`
`
`
`–4–
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`Dr. Nettles’ declaration. This testimony is also relevant to Patent Owner’s position that the
`
`
`
`submission of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 10:
`
`In Exhibit 2009, at 132:6-23, Dr. Greenspun testified that his opinion
`
`that the “apportioning” step of claim 11 of the ‘282 Patent does not require a computer, or
`
`only requires the conventional use of a general purpose computer (see Exh. 1017, ¶105),
`
`would have been the same had he provided his opinion at the time of the Petition. This
`
`testimony is relevant to Petitioner’s position that the submission of Dr. Greenspun’s
`
`declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to Petitioner’s position
`
`and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to Dr. Nettles’
`
`declaration. This testimony is also relevant to Patent Owner’s position that the submission
`
`of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`Observation 11:
`
`In Exhibit 2009, at 135:16-136:19, Dr. Greenspun testified that his
`
`opinion that the “representing” step of claim 11 of the ‘282 Patent does not require a
`
`computer, or only requires the conventional use of a general purpose computer (see Exh.
`
`1017, ¶106), would have been the same had he provided his opinion at the time of the
`
`Petition. This testimony is relevant to Petitioner’s position that the submission of Dr.
`
`Greenspun’s declaration complies with 37 C.F.R. § 42.23(b), and is also relevant to
`
`Petitioner’s position and Dr. Greenspun’s position that Exhibit 1017 is a proper rebuttal to
`
`Dr. Nettles’ declaration. This testimony is also relevant to Patent Owner’s position that the
`
`submission of Dr. Greenspun’s declaration does not comply with 37 C.F.R. § 42.223.
`
`
`
`–5–
`
`
`
`
`
`
`
`Observation 12:
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`In Exhibit 2009, at 116:7-20, Dr. Greenspun testified that claim 11
`
`
`
`would not preempt all practical implementations of the Board’s abstract idea. This
`
`testimony is relevant because it confirms Dr. Nettles’ conclusions in at least paragraph 35 of
`
`Exhibit 2003. This testimony is also relevant because it contradicts the Board’s statements
`
`in the Institution Decision at least at page 15. This testimony is also relevant because it
`
`supports the Patent Owner’s argument that claim 11 is statutory subject matter. See e.g.,
`
`Patent Owner’s Response, p. 17.
`
`Observation 13:
`
`In Exhibit 2009, at 56:12-21, Dr. Greenspun testified that his opinions
`
`would have been the same if he had used Dr. Nettles’ proposed level of ordinary skill in the
`
`art. This testimony is relevant to at least paragraph 27 and 28 of his declaration, where he
`
`states that he believes the level of ordinary skill in the art proposed by Dr. Nettles to be
`
`inadequate.
`
`Observation 14:
`
`In Exhibit 2009, at 75:8-14, Dr. Greenspun testified that he believes
`
`claim 11 to preempt practical real-world implementations of the abstract idea articulated in
`
`paragraph 71 of Exhibit 1017. In Exhibit 2009, at 108:7-19, Dr. Greenspun confirmed that
`
`the abstract idea he articulated in paragraph 71 was different from the one advanced by
`
`Petitioner in the opening Petition. In Exhibit 2009, at 110:8-20, Dr. Greenspun confirmed
`
`that the abstract idea he articulated in paragraph 71 was different from the one advanced by
`
`the Board in the Institution Decision. He further confirms this difference at page 111, line 20
`
`to page 112, line 2. This testimony is relevant because he confirms the abstract idea
`
`
`
`–6–
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations
`CBM2013-00017 (Patent 6,834,282)
`articulated in paragraph 71 of Exhibit 1017 is a new issue introduced with the Reply and
`
`
`
`which was neither proposed by Petitioner nor adopted by the Board in its Institution
`
`Decision.
`
`Observation 15:
`
`In Exhibit 2009, at 116:22-25, Dr. Greenspun testified that the analysis
`
`in his declaration is based on the abstract idea articulated in paragraph 71 of Exhibit 1017.
`
`This testimony is relevant because it confirms that his analysis is based on a newly
`
`presented abstract idea different from the abstract ideas proposed by the Petitioner or
`
`adopted by the Board.
`
`Dated: April 30, 2014
`
`
`
`
`
`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
`
`
`
`–7–
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
