Paper 42
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` Entered: May 12, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`
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`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owners
`____________
`
`Cases CBM2013-00017 (Patent 6,834,282 B1)
`CBM2013-00018 (Patent 7,426,481 B1)1
`____________
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`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`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.
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`

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`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`On May 8, 2014, a conference call was held between counsel for the
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`respective parties and Judges Medley, Blankenship, and Turner. The
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`purpose of the conference call was for Petitioner to seek leave to file a
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`motion to expunge Patent Owner’s motions to exclude and Exhibit 2011,
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`filed in both cases on April 30, 2014. In essence, Petitioner represented that
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`Patent Owner’s motions to exclude were in violation of the Board’s order
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`entered April 25, 2014 (CBM2013-00017, Paper 36 and CBM2013-00018,
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`Paper 36; “the Order”), and sought clarification as to whether it needed to
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`respond to the motions to exclude. Upon consideration of the facts of these
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`cases, the Board agrees that the motions to exclude were in contradiction of
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`the Order. Accordingly, we dismiss the motions to exclude.
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`Background
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`On April 22, 2013, a conference call was held between counsel for the
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`respective parties and Judges Medley, Blankenship, and Turner. During the
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`call, Patent Owner requested authorization to file a motion to strike two
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`declarations made by Philip Greenspun (Exhibits 1017 and 1018 in both
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`CBM2013-00017 and -00018) and the Petitioner’s reply (CBM2013-00017,
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`Paper 30 and CBM2013-00018, Paper 26). According to Patent Owner,
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`Exhibit 1017, and the Petitioner’s reply relying on Exhibit 1017, exceeded
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`the scope of the reply under 37 C.F.R. § 42.23(b). In addition, Patent Owner
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`argued that the filing of Exhibits 1017 and 1018 was in violation of 37
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`C.F.R. § 42.223, which requires a party to seek prior authorization before
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`filing supplemental information. Patent Owner represented that a motion to
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`strike was the appropriate mechanism for addressing such violations, as
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`opposed to a motion to exclude, recognizing that a motion to exclude is
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`reserved for matters of excluding evidence for Federal Rules of Evidence
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`2
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`

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`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`issues. CBM2013-00017, Ex. 2010, 12:1-2 and 13:20 to 14:9.2 At no point
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`did counsel for Patent Owner seek clarification from the panel regarding
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`whether Patent Owner could file the substance of the proposed motions to
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`strike in the form of motions to exclude, and indeed appeared to agree that a
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`motion to exclude would not be the appropriate mechanism for doing so.
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`The Board considered the positions advanced during the April 22,
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`2014 call and denied Patent Owner’s request to file a motion to strike as
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`follows:
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` 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.
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`CBM2013-00017, Paper 36; CBM2013-00018, Paper 36.
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`2 Ex. 2010 is a transcript of the April 22, 2014 conference call.
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`3
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`

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`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`
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`Patent Owner did not seek rehearing of the Order. Instead, Patent
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`Owner filed a motion to exclude Exhibit 1017 and Exhibit 1018 for the same
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`reasons advanced previously during the April 22, 2014 call. Compare, e.g.,
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`CBM2013-00017, Ex. 2010 and Paper 39.
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`Analysis
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`We agree with the Petitioner that Patent Owner’s filing of the Patent
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`Owner’s motions to exclude was contradictory to the Order. The Order
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`made clear that, in these proceedings, Patent Owner was not authorized to
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`brief the issue of whether Exhibits 1017 and 1018 are beyond the scope of
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`proper evidence submitted with a reply or are supplemental information
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`under 37 C.F.R. § 42.223. Whether Patent Owner styled the motion a
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`motion to strike or a motion to exclude, the substance of the argument is the
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`same and one for which the Board did not want briefing.
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`We also are not persuaded by Patent Owner’s arguments made during
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`the May 8, 2014 conference call that Patent Owner’s motion to exclude is
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`within the rules and is consistent with other Board orders in other
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`proceedings. Even if so, Patent Owner knew that in these proceedings, the
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`panel did not desire nor authorize such briefing. Moreover, Patent Owner’s
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`arguments made during the May 8, 2014 conference call are contrary to
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`representations made by Patent Owner during the April 22, 2014 conference
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`call. During the April 22, 2014 conference call, counsel for Patent Owner
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`represented that a motion to exclude would not be the proper motion to
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`attempt to remove from the record Exhibits 1017 and 1018. Yet during the
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`May 8, 2014 conference call, Patent argued the exact opposite – that a
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`4
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`

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`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`motion to exclude is proper to argue the sufficiency of evidence.3 Patent
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`Owner’s contradictory representations made to the Board are troublesome.
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`Patent Owner took it upon itself to do what it wanted to do regardless of the
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`Order for these proceedings. Such action is a direct disregard for the
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`guidance provided by the Board for these proceedings. As a result, we need
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`not and will not consider Patent Owner’s motions to exclude.
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`A brief discussion was had regarding the requests for oral hearing in
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`these proceedings. A decision on the requests for oral hearing will be made
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`in due course.
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`Accordingly, it is
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`ORDERED that Patent Owner’s motions to exclude in CBM2013-
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`00017 and CBM2013-00018 are dismissed and will not be considered on the
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`merits.
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`3 The Trial Practice Guide makes it clear that a motion to exclude is not the
`proper venue to argue the sufficiency of evidence. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
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`5
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`

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`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`
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`For PETITIONER:
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`Ketith Broyles
`Keith.broyles@alston.com
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`Jason Cooper
`Jason.cooper@alston.com
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`David Frist
`David.frist@alston.com
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`For PATENT OWNER:
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`Kent Chambers
`kchambers@tcchlaw.com
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`David O’Brien
`David.obrien@haynesboone.com
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`John Russell Emerson
`Russell.ermerson@haynesboone.com
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`6