Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 33
`
`
`
` Entered: August 15, 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 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 33
`
`
`
` Entered: August 15, 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 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 August 14, 2014, a conference call was held involving counsel for the
`
`respective parties and Judges Blankenship and Turner. Petitioner requested the
`
`conference call to seek authorization to file a motion for waiver, pursuant to
`
`37 C.F.R. § 42.5(b), of the page limits set for Petitioner’s Replies to Patent Owner
`
`Responses set by 37 C.F.R. § 42.24(c)(1).
`
`Petitioner argued that additional pages for each of its Replies to Patent
`
`Owner Responses were needed to address all of the issues presented in the Patent
`
`Owner’s Responses. Petitioner argued that each Response addresses standing
`
`issues, under 35 U.S.C. § 325(a), changes involving issues of 35 U.S.C. § 101
`
`under Alice Corp. v. CLS Bank Int’l, et al., Docket No. 13-298 (2014) (“Alice
`
`Corp.”), and numerous claim constructions raised by Patent Owner that were not
`
`addressed in the Petitions nor the Decisions to Institute. Because of these issues,
`
`Petitioner requested a waiver of the Rules to permit it to file Replies to the Patent
`
`Owner Responses encompassing approximately 30 pages each.
`
`Patent Owner countered that there was nothing in the Responses that
`
`necessitated that need for additional pages. Patent Owner indicated that each
`
`Response was under the page limits set by 37 C.F.R. § 42.24(b)(2), and that the
`
`number of issues discussed in each was not great. Patent Owner also argued that
`
`the standard needed to waive the rules had not been demonstrated by Petitioner.
`
`Patent Owner also indicated that if Petitioner was ultimately granted additional
`
`pages for its Replies, Patent Owner should be entitled to a Sur-Reply in response.
`
`No consensus was reached by the parties during the conference call.
`
` 2
`
`
`
`
`
`Cases CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`We are persuaded that Petitioner’s request does not present extraordinary
`
`circumstances that justify additional pages for their Replies. Petitioner need not
`
`address issues in their Replies that we have already decided in this proceeding.
`
`Additionally, Patent Owner stipulates that “Patent Owner herein repeats aspects of
`
`its earlier argument that Petitioner is barred under 35 U.S.C. 325(a), solely to
`
`ensure a complete record of this proceeding, and to preserve all issues for appeal.”
`
`Paper 34, 33, Paper 29, 45, Paper 32, 52, in CBM2013-00052, -00053, and -00054,
`
`respectively. If Petitioner perceives that the issues raised in the Patent Owner
`
`Responses are sufficiently different in kind or scope from those raised earlier,
`
`Petitioner can address such distinctions in its Replies.
`
`With respect to Petitioner’s request for pages to address Alice Corp., we
`
`have previously indicated that we would consider additional briefing beyond the
`
`proscribed filings to address the effect of Alice Corp. (Papers 33, 28, and 31, in
`
`CBM2013-00052, -00053, and -00054, respectively), but we received no such
`
`request from either party. With respect to extra pages to address the non-standing
`
`issues, i.e., claim constructions and the sole ground in each proceeding asserting
`
`that claims fail to recite patentable subject matter under 35 U.S.C. § 101,
`
`Petitioner’s counsel indicated that addressing those issues alone would be under
`
`the 15 pages allotted for each Petitioner ‘s Reply. As such, we not persuaded that
`
`Petitioner’s desire to address the Alice Corp. and the non-standing issues warrant
`
`the extra pages sought by Petitioner, nor that a waiver of the rules would be
`
`appropriate based on the specific facts of these proceedings.
`
`In consideration of the foregoing, it is hereby:
`
` 3
`
`
`
`
`
`Cases CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`ORDERED that no authorization is granted for the filing of a motion for
`
`waiver, pursuant to 37 C.F.R. § 42.5(b), with respect to the page limits set for
`
`Petitioner’s Replies to the Patent Owner Responses.
`
`
`
`
`
` 4
`
`
`
`
`
` 5
`
`
`
`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
`
`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
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
