Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`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
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`PETITIONER VOLUSION, INC.’S
`RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF PHILIP GREENSPUN
`
`
`U.S. Patent No. 6,834,282
`
`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
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`PETITIONER VOLUSION, INC.’S
`RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF PHILIP GREENSPUN
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`to the Board’s April 25, 2014 Order on the Conduct of the
`
`Pursuant
`
`Proceeding, Paper 36, Petitioner submits the following Response to Patent
`
`Owner’s Motion for Observation Regarding Cross-Examination of Philip
`
`Greenspun (Paper 40).
`
`Response to Observation 1: In Observation 1, Patent Owner cited certain
`
`testimony of Dr. Greenspun regarding whether claim 11 would preempt all
`
`practical applications of the “Board’s abstract idea” and thus contradicts the
`
`Institution Decision. Dr. Greenspun’s testimony, however, does not contradict the
`
`Board’s statements in the Institution Decision. Dr. Greenspun testified that any
`
`difference between his expression of the abstract idea and the Board’s expression
`
`does not “affect[] the analysis that the claim is, at its essence, a claim on an
`
`abstract idea,” Ex. 2009, 110:8-111:8. Dr. Greenspun testified that his expression
`
`of the abstract idea is a more specific expression of the broader abstract idea
`
`expressed by the Board. Ex. 2009, 110:8-112:15. Dr. Greenspun did not confirm
`
`Dr. Nettles’ conclusions in Paragraph 35 of Ex. 2003 that (i) the “recited hierarchy
`
`is operative” and (ii) claims 11-20 include many specific details regarding the
`
`operational features provided by the hierarchy that allow for practical alternatives
`
`not embraced by claims 11-20.” Dr. Greenspun repeatedly testified that the
`
`claimed hierarchy is not “operative” or “operational.” Ex. 2009, 79:5-81:22,
`
`92:17-93:18, 96:5-97:13. Dr. Greenspun’s testimony does not support Patent
`
`1
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`Owner’s argument that claim 11 is statutory subject matter because as discussed
`
`above, Dr. Greenspun testified that any difference between his expression of the
`
`abstract idea and the Board’s expression does not “affect[] the analysis that the
`
`claim is, at its essence, a claim on an abstract idea.” Ex. 2009, 110:8-111:8.
`
`Response to Observation 2: In Observation 2, Patent Owner cited certain
`
`testimony of Dr. Greenspun regarding whether the patent specification explicitly
`
`teaches embodiments that would not use a computer. However,
`
`the cited
`
`testimony of Dr. Greenspun indicates that the specification of the ’282 Patent does
`
`not explicitly teach that the preferred embodiments would be practiced without a
`
`computer. Ex. 2009, 95:15-96:1. Dr. Greenspun’s further testimony that the
`
`claims of the patent could be practiced without a computer, by a person using pen
`
`and paper are entirely consistent with the cited testimony and thus do not
`
`contradict Petitioner’s position that the claims could be performed using a pen and
`
`paper.
`
`See, e.g., Ex. 2009, 120:19-121:3; 157:9-160:7.
`
`For instance, Dr.
`
`Greenspun testified that creation of Figure 3, an embodiment in the specification,
`
`can be performed by a human using pen and paper. Ex. 2009, 157:9-160:7.
`
`Response to Observations 3-11:
`
`In Observations 3-11, Patent Owner
`
`argues Dr. Greenspun’s testimony that his opinions would have been the same
`
`between 2001 and the present is relevant to whether Dr. Greenspun’s declaration is
`
`proper rebuttal evidence and in compliance with 37 C.F.R. §§ 42.23(b) and 42.223.
`
`2
`
`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`Petitioner objects to Observations 3-11 as improper and not compliant with the
`
`Board’s rules on observations on cross-examination. Section L of the Office
`
`Patent Trial Practice Guide, regarding Observations on Cross-Examination, states
`
`that “An observation (or response) is not an opportunity to raise new issues, re-
`
`argue issues, or pursue objections.” 77 Fed. Reg. 48755, 48768 (Aug. 14, 2012).
`
`Patent Owner is once again attempting to improperly pursue its objections to the
`
`submission of Dr. Greenspun’s declaration. As such, these observations should be
`
`disregarded as improper and irrelevant. Further, Dr. Greenspun’s declaration was
`
`prepared as rebuttal to Dr. Nettles’ testimony, as demonstrated by his testimony
`
`that he was engaged only to respond to the opinions of Dr. Nettles. See, e.g., Ex.
`
`2009, 8:23-9:19.
`
`Response to Observation 12:
`
`In Observation 12, Patent Owner cited
`
`certain testimony of Dr. Greenspun regarding whether claim 11 would preempt all
`
`practical applications of the “Board’s abstract idea” and thus contradicts the
`
`Institution Decision. Dr. Greenspun’s testimony, however, does not contradict the
`
`Board’s statements in the Institution Decision. Dr. Greenspun testified that any
`
`difference between his expression of the abstract idea and the Board’s expression
`
`does not “affect[] the analysis that the claim is, at its essence, a claim on an
`
`abstract idea.” Ex. 2009, 110:8-111:8. Dr. Greenspun testified that his expression
`
`of the abstract idea is a more specific expression of the broader abstract idea
`
`3
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`expressed by the Board. Ex. 2009, 110:8-112:15. Dr. Greenspun did not confirm
`
`Dr. Nettles’ conclusions in Paragraph 35 of Ex. 2003 that (i) the “recited hierarchy
`
`is operative” and (ii) claims 11-20 include many specific details regarding the
`
`operational features provided by the hierarchy that allow for practical alternatives
`
`not embraced by claims 11-20.” Dr. Greenspun repeatedly testified that the
`
`claimed hierarchy is not “operative” or “operational.” Ex. 2009, 79:5-81:22;
`
`92:17-93:18; 96:5-97:13. Dr. Greenspun’s testimony does not support Patent
`
`Owner’s argument that claim 11 is statutory subject matter because, as discussed
`
`above, Dr. Greenspun testified that any difference between his expression of the
`
`abstract idea and the Board’s expression does not “affect[] the analysis that the
`
`claim is, at its essence, a claim on an abstract idea.” Ex. 2009, 110:8-111:8.
`
`Response to Observation 13: In Observation 13, Patent Owner cited certain
`
`testimony of Dr. Greenspun that his opinions would have been the same if he had
`
`used Dr. Nettles’ proposed level of ordinary skill in the art. Dr. Greenspun
`
`testified that Dr. Nettles’ proposed level of ordinary skill in the art is inadequate.
`
`Ex. 2009, 17:1-18:25. Dr. Greenspun’s testimony that his opinions would have
`
`been the same if he had used Dr. Nettles’ proposed level of ordinary skill in the art
`
`is not relevant to Dr. Greenspun’s opinion that Dr. Nettles’ proposed level of
`
`ordinary skill in the art is inadequate.
`
`Response to Observation 14: In Observation 14, Patent Owner cited certain
`
`4
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`testimony of Dr. Greenspun regarding the differences between his expression of
`
`the abstract
`
`idea and the expression found in the Petition and the Board’s
`
`Institution Decision. Petitioner objects to Observation 14 as improper and not
`
`compliant with the Board’s rules on observations on cross-examination. Section L
`
`of the Office Patent Trial Practice Guide, regarding Observations on Cross-
`
`Examination, states that “An observation (or response) is not an opportunity to
`
`raise new issues, re-argue issues, or pursue objections.” 77 Fed. Reg. 48755,
`
`48768 (Aug. 14, 2012). Patent Owner is once again attempting to pursue its
`
`objections to the submission of Dr. Greenspun’s declaration. As such, these
`
`observations should be disregarded as improper and irrelevant.
`
`As discussed above regarding Observations 1 and 12, Dr. Greenspun’s
`
`testimony does not contradict the Board’s statements in the Institution Decision.
`
`Dr. Greenspun testified that any difference between his expression of the abstract
`
`idea and the Board’s expression does not “affect[] the analysis that the claim is, at
`
`its essence, a claim on an abstract idea,” Ex. 2009, 110:8-111:8. Dr. Greenspun
`
`testified that his expression of the abstract idea is a more specific expression of the
`
`broader abstract
`
`idea expressed by the Board. Ex. 2009, 110:8-112:15. Dr.
`
`Greenspun further testified that the abstract idea expressed in his declaration and
`
`the abstract idea expressed in the Petition are merely “different English language
`
`representations of the same abstract idea.” Ex. 2009, 160:8-16, 162:10-22. Dr.
`
`5
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`Greenspun stated that his expression of the abstract idea was in response to Dr.
`
`Nettles’ expression of the abstract idea. Ex. 2009, 71:17-24; 72:21-73:13.
`
`Response to Observation 15: In Observation 15, Patent Owner cited certain
`
`testimony of Dr. Greenspun regarding the abstract idea upon which his declaration
`
`is based.
`
`As discussed above regarding Observations 1, 12, and 14, Dr. Greenspun
`
`testified that his expression of the abstract idea is consistent with both the Petition
`
`and the Institution Decision. Ex. 2009, 110:8-112:15; 162:10-22. Moreover, Dr.
`
`Greenspun indicates that his expression of the abstract idea was in response to Dr.
`
`Nettles’ expression of the abstract idea. Ex. 2009, 71:17-24; 72:21-73:13.
`
`Dated: May 14, 2014
`
`Respectfully submitted,
`
`/Keith E. Broyles/
`Keith E. Broyles (Reg. No. 42,365)
`keith.broyles@alston.com
`Jason P. Cooper (Reg. No. 38,114)
`jason.cooper@alston.com
`David S. Frist (Reg. No. 60,511)
`david.frist@alston.com
`ALSTON & BIRD LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, Georgia 30309-3424
`Tel.: (404) 881-7000
`Fax: (404) 881-7777
`
`Attorneys for Petitioner Volusion, Inc.
`
`6
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 CFR § 42.205, that service
`
`of PETITIONER VOLUSION, INC.’S RESPONSE TO PATENT OWNER’S
`
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF
`
`PHILIP GREENSPUN was made by email upon all counsel of record on May 14,
`
`2014 and service by UPS overnight delivery on the following counsel for the
`
`Patent Owner on May 14, 2014 as listed below:
`
`David W. O’Brien
`William B. Nash
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Ste. 700
`Dallas, TX 75219
`Telephone: (512) 867-8457
`Fax: (214) 200-0853
`Email: david.obrien.ipr@haynesboone.com
`Email: bill.nash@haynesboone.com
`
`Dated: May 14, 2014
`
`/Keith E. Broyles/
`Keith E. Broyles
`(Reg. No. 42,365)
`
`7
`
`
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