`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 19
` Entered: December 20, 2013
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`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)
`CBM2013-00018 (Patent 7,426,481)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 a similar issue 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.
`
`
`
`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
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`On December 13, 2013, a conference call was held between counsel
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`for the respective parties and Judges Medley, Blankenship, and Turner. The
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`purpose of the call was for Patent Owner to meet its requirement that it
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`confer prior to filing a motion to amend. 37 C.F.R. § 42.221(a).
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`The sole issue for trial in each of the two proceedings is whether the
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`claims involved in each proceeding are unpatentable under 35 U.S.C. § 101.
`
`Counsel for Patent Owner indicated that Patent Owner intends to file a
`
`motion to amend in each case. Specifically, Patent Owner proposes to
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`substitute new claims for claims 1, 3, 5, 6, 11, 13, 15, and 16 of the
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`6,834,282 patent involved in CBM2013-00017 and claims 1, 26, 50, and 70
`
`of the 7,426,481 patent involved in CBM2013-00018.
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`Guidance was provided to Patent Owner regarding motions to amend.
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`That guidance included directing Patent Owner to the following orders:
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`Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27 (June
`
`3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper
`
`26 (June 11, 2013); and ZTE Corporation and ZTE (USA) Inc. v.
`
`Contentguard Holdings Inc., IPR2013-00136, Paper 33 (November 7, 2013).
`
`Patent Owner disagreed that an inter partes review (IPR) decision or
`
`order, particularly the Idle Free decision, is relevant to a covered business
`
`method patent review (CBM) proceeding. Moreover, Patent Owner
`
`indicated that it was unaware of any other CBM proceeding where the Board
`
`indicated that Idle Free was relevant to a CBM proceeding. Lastly, Patent
`
`Owner argued that to the extent the guidance provided in Idle Free is
`
`relevant to a CBM proceeding, the requirement to show that substitute
`
`claims are patentable over prior art known to Patent Owner (see., e.g., Idle
`
`2
`
`
`
`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`Free at 7-8) should not apply in a CBM proceeding where the sole basis for
`
`trial is unpatentability based on 35 U.S.C. § 101.
`
`As explained during the call, the guidance provided in Idle Free
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`regarding a motion to amend applies to any motion to amend, whether that
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`motion is filed in an IPR or a CBM. Idle Free provides guidance of “several
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`important requirements for a patent owner’s motion to amend claims.” Id. at
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`2. The “important requirements” are those statutory and regulatory
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`requirements for motions to amend identified, for example, at pages 3-4 and
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`7 in Idle Free. The statutory and regulatory language regarding motions to
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`amend in the context of an IPR is substantively the same as the statutory and
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`regulatory language in the context of a CBM. See, 35 U.S.C. § 316(d);
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`35 U.S.C. § 326(d); and 37 C.F.R. § 42.20; 37 C.F.R. § 42.121; 37 C.F.R. §
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`42.221. Therefore, the guidance provided in Idle Free is relevant in the
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`context of a CBM proceeding.
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`Moreover, these are not the first CBM proceedings where the Board
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`directed the parties to IPR decisions like Idle Free for guidance regarding
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`motions to amend. See e.g., SAP America, Inc. v. Pi-Net International, Inc.,
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`CBM2013-00013, Paper 25 (October 17, 2013); Salesforce.com, Inc. v.
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`VirtualAgility, Inc., CBM2013-00024, Paper 19 (December 5, 2013); and
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`LinkedIn Corp. v. AvMarkets Inc., CBM2013-00025, Paper 18 (December 2,
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`2013) (where the ground for instituting trial was based solely on § 101).
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`Lastly, we address Patent Owner’s argument that to the extent that
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`Idle Free is relevant to a CBM proceeding, the requirement to show that
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`substitute claims are patentable over prior art known to Patent Owner (see.,
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`e.g., Idle Free at 7-8) should not apply in a CBM proceeding where the sole
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`basis for trial is unpatentability based on 35 U.S.C. § 101. In essence, Patent
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`3
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`
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`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`Owner contends that it only need to show how its proposed claims are patent
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`eligible under 35 U.S.C. § 101.
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`During a CBM trial, a party may file a motion to amend. 37 C.F.R. §
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`42.221. A motion to amend may be denied where the amendment does not
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`respond to a ground of unpatentability involved in the trial. Thus, Patent
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`Owner is correct that it need show how its proposed claims are patent
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`eligible under 35 U.S.C. § 101. However, that is not the sole requirement.
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`A motion to amend may be denied where the amendment seeks to enlarge
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`the scope of the claims of the patent or introduce new subject matter.
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`37 C.F.R. § 42.221(a)(2)(ii). In that regard, a motion to amend must show
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`written description support in the original disclosure of the patent for each
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`claim that is added or amended. 37 C.F.R. § 42.221(a)(2)(ii).
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`Moreover, a motion to amend is a motion under 37 C.F.R. § 42.20(c),
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`where the moving party bears the burden of proof to establish that it is
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`entitled to the requested relief. That burden does not fall on the Petitioner;
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`nor does that burden fall on the Board. It is the Patent Owner that seeks
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`entry for its proposed new claims. Thus, it is the Patent Owner who must set
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`forth sufficient reasoning and evidence to show that it is entitled to the relief
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`it seeks, i.e., that it is entitled to its proposed claims. Patent Owner’s focus
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`on 37 C.F.R. § 42.221(a)(2)(i) as the only requirement for a motion to
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`amend is myopic and misplaced. Patent Owner fails to take into
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`consideration all of the other statutory and regulatory requirements. For a
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`patent owner’s motion to amend, 37 C.F.R. § 42.20 places the burden on the
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`patent owner to show that it is entitled to its proposed claims, and thus show
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`a patentable distinction of each proposed substitute claim over the prior art
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`known to the patent owner. Idle Free at 7-8. This is regardless of the basis
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`4
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`
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`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`upon which the trial was instituted. Id.
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`Patent Owner inquired whether the claim listing need be double-
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`spaced. Pursuant to 37 C.F.R. § 42.221, a motion to amend must include a
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`claim listing. Thus, the listing is part of the motion. The motion
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`requirements for formatting and page limits apply, and, therefore, the motion
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`including the claim listing must be double spaced. 37 C.F.R. § 42.6.
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`5
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`Cases CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
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`For Petitioner:
`
`Keith 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
`
`Alisa Lipski
`alipski@azalaw.com
`
`
`6
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`
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