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` Paper 35
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` Entered: August 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`CALLIDUS SOFTWARE INC.
`Petitioner,
`
`v.
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`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`____________
`
`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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`
`
`Before HOWARD B. BLANKENSHIP and KEVIN F. TURNER,
`Administrative Patent Judges.
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`TURNER, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`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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`
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`On August 14, 2014, a conference call was held involving counsel for the
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`respective parties and Judges Blankenship and Turner. Petitioner requested the
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`conference call to seek authorization to file a motion for waiver, pursuant to
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`37 C.F.R. § 42.5(b), of the page limits set for Petitioner’s Replies to Patent Owner
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`Responses set by 37 C.F.R. § 42.24(c)(1).
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`Petitioner argued that additional pages for each of its Replies to Patent
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`Owner Responses were needed to address all of the issues presented in the Patent
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`Owner’s Responses. Petitioner argued that each Response addresses standing
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`issues, under 35 U.S.C. § 325(a), changes involving issues of 35 U.S.C. § 101
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`under Alice Corp. v. CLS Bank Int’l, et al., Docket No. 13-298 (2014) (“Alice
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`Corp.”), and numerous claim constructions raised by Patent Owner that were not
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`addressed in the Petitions nor the Decisions to Institute. Because of these issues,
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`Petitioner requested a waiver of the Rules to permit it to file Replies to the Patent
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`Owner Responses encompassing approximately 30 pages each.
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`Patent Owner countered that there was nothing in the Responses that
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`necessitated that need for additional pages. Patent Owner indicated that each
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`Response was under the page limits set by 37 C.F.R. § 42.24(b)(2), and that the
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`number of issues discussed in each was not great. Patent Owner also argued that
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`the standard needed to waive the rules had not been demonstrated by Petitioner.
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`Patent Owner also indicated that if Petitioner was ultimately granted additional
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`pages for its Replies, Patent Owner should be entitled to a Sur-Reply in response.
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`No consensus was reached by the parties during the conference call.
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` 2
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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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`We are persuaded that Petitioner’s request does not present extraordinary
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`circumstances that justify additional pages for their Replies. Petitioner need not
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`address issues in their Replies that we have already decided in this proceeding.
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`Additionally, Patent Owner stipulates that “Patent Owner herein repeats aspects of
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`its earlier argument that Petitioner is barred under 35 U.S.C. 325(a), solely to
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`ensure a complete record of this proceeding, and to preserve all issues for appeal.”
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`Paper 34, 33, Paper 29, 45, Paper 32, 52, in CBM2013-00052, -00053, and -00054,
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`respectively. If Petitioner perceives that the issues raised in the Patent Owner
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`Responses are sufficiently different in kind or scope from those raised earlier,
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`Petitioner can address such distinctions in its Replies.
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`With respect to Petitioner’s request for pages to address Alice Corp., we
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`have previously indicated that we would consider additional briefing beyond the
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`proscribed filings to address the effect of Alice Corp. (Papers 33, 28, and 31, in
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`CBM2013-00052, -00053, and -00054, respectively), but we received no such
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`request from either party. With respect to extra pages to address the non-standing
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`issues, i.e., claim constructions and the sole ground in each proceeding asserting
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`that claims fail to recite patentable subject matter under 35 U.S.C. § 101,
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`Petitioner’s counsel indicated that addressing those issues alone would be under
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`the 15 pages allotted for each Petitioner ‘s Reply. As such, we not persuaded that
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`Petitioner’s desire to address the Alice Corp. and the non-standing issues warrant
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`the extra pages sought by Petitioner, nor that a waiver of the rules would be
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`appropriate based on the specific facts of these proceedings.
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`In consideration of the foregoing, it is hereby:
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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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`ORDERED that no authorization is granted for the filing of a motion for
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`waiver, pursuant to 37 C.F.R. § 42.5(b), with respect to the page limits set for
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`Petitioner’s Replies to the Patent Owner Responses.
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` 4
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` 5
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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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`PETITIONER:
`
`Deborah Fishman
`fishmand@dicksteinshapiro.com
`
`Jeffrey Miller
`millerj@dicksteinshapiro.com
`
`Michael Tonkinson
`tonkinsonm@dicksteinshapiro.com
`
`PATENT OWNER:
`
`Kent Chambers
`kchambers@tcchlaw.com
`
`David O’Brien
`david.obrien.ipr@haynesboone.com
`
`John Emerson
`russell.emerson.ipr@haynesboone.com
`
`Raghav Bajaj
`raghav.bajaj.ipr@haynesboone.com
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`
`