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`Paper 26
`Entered: March 28, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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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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`CALLIDUS SOFTWARE INC.
`Petitioner
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`v.
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`VERSATA SOFTWARE, INC. and
` VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
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`Cases CBM2013-00052 (Patent 7,904,326 B2)
`CBM2013-00053 (Patent 7,958,024 B2)
`CBM2013-00054 (Patent 7,908,304 B2) 1
`_______________
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`
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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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`ORDER
`Conduct of the Proceeding
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`1 This order addresses an issue that is identical in all three cases. Therefore, we
`exercise discretion to issue one order to be filed in each of the three cases. The
`parties, however, are not authorized to use this style heading in subsequent papers
`since doing so may cause confusion.
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`
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`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
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` 37 C.F.R. § 42.5
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`On March 27, 2014, the initial conference call2 was held involving counsel
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`for the respective parties and Judges Blankenship, Medley and Turner.
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`Patent Owner Motion to Amend
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`Patent Owner intends to file a motion to amend in all three cases. Counsel
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`for Patent Owner indicated that he was familiar with the requirements for a motion
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`to amend. The Board directed attention to CBM2013-00017 and CBM2013-00018
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`for further guidance regarding motions to amend. See, e.g., CBM2013-00017,
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`Papers 19 and 24. The parties also are directed to the following orders and
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`decisions: Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27
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`(June 3, 2013) and Paper 68 (February 11, 2014); Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013) and Paper 66 (January
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`7, 2014); and ZTE Corporation and ZTE (USA) Inc. v. Contentguard Holdings Inc.,
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`IPR2013-00136, Paper 33 (November 7, 2013). Should either party have questions
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`regarding a motion to amend, the party may initiate a conference call with opposing
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`counsel and the Board to discuss.
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`Supplemental Information for CBM2013-00053 and -00054
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`Petitioner seeks authorization to file a motion to submit supplemental
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`2 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`2
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`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
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`information pursuant to 37 C.F.R. § 42.223(c). Specifically, Petitioner seeks to
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`submit challenges to dependent claims of U.S. Patent No. 7,958,024 in CBM2013-
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`00053 and dependent claims of U.S. Patent No. 7,908,304 in CBM2013-00054;
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`claims that are not involved in either case. A party seeking to submit supplemental
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`information not relevant to a claim for which the trial has been instituted must show
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`why the supplemental information reasonably could not have been obtained earlier,
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`and that consideration of the supplemental information would be in the interests-of-
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`justice. 37 C.F.R. § 42.223(c).
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`Based on the facts presented, the Board has determined that considering the
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`supplemental information in either CBM2013-00053 or CBM2013-00054 would
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`not be in the interests-of-justice. As explained, considering such issues in either
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`case would amount to having a trial within a trial. Specifically, a motion
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`challenging multiple dependent claims, not involved in the trial would require
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`briefing by the Petitioner, an opposition by the Patent Owner, and a reply by
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`Petitioner. Moreover, there would need to be time to allow for cross-examination
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`of any witness providing testimony as to the issues raised. All of this would impact
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`the current schedule, and would not lead to a just, speedy, and inexpensive
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`proceeding pursuant to 37 C.F.R. § 42.1(b). As further explained, Petitioner is not
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`without recourse. Petitioner may file additional petitions raising the additional
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`issues against additional claims. For all of these reasons, Petitioner is not
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`authorized to file a motion to submit supplemental information.
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`3
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`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
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`Schedule
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`Petitioner requests authorization to file a motion to expedite times in all three
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`cases. Patent Owner opposes. The Board considered the merits of the arguments
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`during the conference call.
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`Petitioner requests that the Board expedite Due Dates 1-7. Patent Owner
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`requests that the Due Dates remain unchanged, as they already have been somewhat
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`shortened, and Patent Owner needs the allotted time. The sole issue for each trial is
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`whether claims of the respective patent are unpatentable under 35 U.S.C. § 101. As
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`such, a schedule of due dates that focused on the sole issue was set by the Board.
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`Based on the facts presented during the conference call, the Board was not
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`persuaded to change the current schedule. Specifically, the Board has determined
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`that in order to resolve the proceedings in a speedy, yet just manner, the current
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`schedule for each proceeding strikes a balance between the competing interests of
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`the parties. 37 C.F.R. § 42.1(b). The parties were reminded that they may stipulate
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`different dates for Due Dates 1 through 3. The parties were encouraged to consider
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`doing so. The Board would consider expediting Due Dates 4-7 if the parties agreed
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`upon an expedited schedule for Due Dates 1-3. For all of the above reasons,
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`It is
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`ORDERED that Petitioner’s request to file a motion to submit supplemental
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`information in CBM2013-00053 and CBM2013-00054 is denied; and
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`FURTHER ORDERED that Petitioner’s request that the Board expedite Due
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`Dates 1-7 in each proceeding is denied.
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`4
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`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
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`PETITIONER:
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`Deborah Fishman
`fishmand@dicksteinshapiro.com
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`Jeffrey Miller
`millerj@dicksteinshapiro.com
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`PATENT OWNER:
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`Kent Chambers
`kchambers@tcchlaw.com
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`Alisa Lipski
`alipski@azalaw.com
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`David O’Brien
`david.obrien.ipr@haynesboone.com
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`5
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