Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 31
`
` Entered: June 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`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
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`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.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 31
`
` Entered: June 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`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
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`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.
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`On May 30, 2014, a conference call was held involving counsel for the
`respective parties and Judges Blankenship, Medley, and Turner. Patent Owner
`requested the conference call to discuss a requested adjustment to Due Dates 1 and
`2 of the Scheduling Order (Paper 222), upon which the parties were unable to come
`to agreement. During the conference call we noted that Due Date 1 had previously
`been extended through mutual stipulation of the parties (Paper 30) to June 10,
`2014.
`
`Patent Owner indicated that it was willing to stipulate that no motions to
`amend would be introduced or filed in the instant proceedings, such that Due Date
`3 would no longer be necessary. Based on that, Patent Owner indicated that it
`proposes to extend Due Date 1 by one month to July 10, 2014, and Due Date 2 by
`one month to August 22, 2014. Patent Owner argued that this would allow for
`consideration by both parties of a ruling by the U.S. Supreme Court in Alice Corp.
`v. CLS Bank Int’l, et al., Docket No. 13-298 (2014) (“CLS Bank”), involving issues
`of 35 U.S.C. § 101, which is expected this term. Patent Owner indicated that
`because it was not clear when the Supreme Court would hand down its ruling, it
`had not earlier requested the additional extension. Patent Owner argued that the
`extension would allow for consideration of the ruling issuing on or before the end
`of the present term. Patent Owner also indicated that ongoing settlement
`discussions, in early June, may also moot the need for the instant proceedings, and
`would provide an additional rationale for extending the Due Dates.
`
`
`2 Paper number references are to CBM2013-00052, with equivalents in the other
`
` 2
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`Petitioner countered that any extension of the Due Dates would be based on
`speculation. Petitioner argued that we cannot know how the Supreme Court’s
`ruling would affect the grounds in the instant proceedings, or whether a ruling will
`necessarily be issued, and waiting for such a decision would be premature.
`Petitioner indicated that consideration of any Supreme Court ruling should be
`made through additional briefing, where Petitioner would not be limited to 15
`pages of reply. Petitioner also argued that any delay would not be in the interests
`of justice and could affect its additional requests for stays in related district court
`proceedings. Petitioner also argued that Patent Owner earlier should have
`appreciated that a ruling in CLS Bank could affect these proceedings and made or
`requested changes to the Due Dates prior to this late date.
`
`Based on the specific facts of these proceedings, we find good cause to
`extend the specific Due Dates in the instant proceedings. We make this decision
`contingent on no motion to amend being proposed or filed by Patent Owner. These
`proceedings are still in the early stages, and we are persuaded that waiting until
`after the Supreme Court’s ruling in CLS Bank may provide additional guidance and
`would relieve the parties the burden of additional briefing based on the Court’s
`decision. We also find pertinent that the issues of 35 U.S.C. § 101 are the only
`grounds in the instant proceedings. Also, we are not persuaded that extensions to
`the Due Dates would prejudice Petitioner in these proceedings. In addition, if
`either party believes that additional briefing is warranted, beyond the proscribed
`
`
`cases.
`
` 3
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`filings, in response to CLS Bank, the panel remains available for a conference call
`to discuss and consider a request for additional briefing.
`In consideration of the foregoing, it is hereby:
`ORDERED that Due Date 1 is extended to July 10, 2014, Due Date 2 to
`August 22, 2014, and Due Date 3 is deleted from the Scheduling Order.
`
` 4
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`PETITIONER:
`Deborah Fishman
`fishmand@dicksteinshapiro.com
`Jeffrey Miller
`millerj@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
`
`
`
` 5
`
`
`
`
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