Paper No. 34
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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
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`v.
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`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`AND
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`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
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`____________
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`Case CBM2013-00054
`Patent 7,908,304
`____________
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`Filed: August 22, 2014
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`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`AND
`
`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`
`____________
`
`Case CBM2013-00054
`Patent 7,908,304
`____________
`
`Filed: August 22, 2014
`
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
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`TABLE OF CONTENTS
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`Page No.
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`A. ..... “Commission Engine” ........................................................................... 2
`B. ..... “Selling Agreement” ............................................................................. 4
`C. ..... “Interface” for Obtaining a Plurality of Business Rules ....................... 6
`III. CLAIMS 1, 12, AND 32 ARE DIRECTED TO ABSTRACT IDEAS .......... 7
`IV. THE REMAINDER OF CLAIMS 1, 12 & 32 DO NOT TRANSFORM THE
`ABSTRACT IDEAS INTO PATENT-ELIGIBLE CLAIMS ....................... 10
`THE DEPENDENT CLAIMS ARE ALSO DIRECTED TO NON-
`PATENTABLE SUBJECT MATTER .......................................................... 12
`VI. PETITIONER IS NOT BARRED FROM POST-GRANT REVIEW .......... 12
`VII. CONCLUSION .............................................................................................. 15
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`V.
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .................................................................................passim
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`Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) ...................................................................... 8, 11
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`Bell Atl. Network Servs. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258 (Fed. Cir. 2001) ............................................................................ 2
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`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) .......................................................................................... 8
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`Chevron U.S.A. v. Natural Res. Def. Council,
`104 S. Ct. 2778, 467 U.S. 837 (1984) ................................................................. 13
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`CyberSource Corp v Retail Decisions Inc.,
`654 F.3d 1366, 99 U.S.P.Q.2d 1690 (Fed. Cir. 2011) .......................... 8, 9, 11, 12
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`Ethicon Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988) .......................................................................... 13
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .............................................................................. 3
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`Merck & Co., Inc., v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ........................................................................ 2, 5
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`Princess Cruises, Inc. v. United States,
`201 F.3d 1352 (Fed. Cir. 2000) .......................................................................... 13
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`STATUTES
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`U.S.C. §§ 42.300 ...................................................................................................... 12
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`35 U.S.C. § 101 .............................................................................................. 1, 4, 7, 8
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`35 U.S.C. § 321 ........................................................................................................ 13
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`Petitioner’s Reply to Patent Owner Response
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`35 U.S.C. § 325 ............................................................................................ 12, 13, 14
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`AIA § 18(a)(1)(B) .................................................................................................... 13
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`AIA § 18(a)(1)(C)(i) and (ii) .................................................................................... 13
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`AIA § 18(a)(1) ................................................................................................... 12, 13
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`REGULATIONS
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`37 C.F.R. § 42.23 ....................................................................................................... 1
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`37 C.F.R. § 42.201 ................................................................................................... 12
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`37 C.F.R. § 42.300 ............................................................................................. 12, 13
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`iii
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
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`I.
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`INTRODUCTION
`The Board instituted this CBM Review because it found that it was “more
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`likely than not that Petitioner would prevail in establishing unpatentability of
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`claims 1, 12-25, 30-32, 42, and 43” under 35 U.S.C. § 101. Institution Decision,
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`Paper No. 19 at 26 (P.T.A.B. Mar. 4, 2014) (“ID”). Nothing in the Patent Owner’s
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`Response (“POR”) changes the reasoned and correct conclusions of the Board.
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`Alice reaffirmed that claims directed to abstract ideas, without limitations
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`sufficient to tie them down, are patent ineligible. Rather than address this
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`standard, Patent Owner (“PO”) concocts its own misguided tests for patent-
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`eligibility that have no basis in precedent and run afoul of the holdings in Alice and
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`CyberSource.
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`II. CLAIM CONSTRUCTION
`The Board’s constructions in the Institution Decision were correct, and
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`should be adopted in the Final Decision.1 Under the guise of “lexicography,” PO’s
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`proposed construction of “commission engine” represents an improper attempt to
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`amend claims, not construe them. PO’s proposed constructions are unsupported by
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`the claim language or the specification. In any event, since PO proposes even
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`broader constructions than already-adopted by the Board, these proposed
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`1 Indeed, PO does not challenge the Board’s constructions of “module,”
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`“modules,” “backbone,” and “engine.” POR 16.
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`1
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`constructions do nothing to tie down the abstractness of the challenged claims and
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`are thus not necessary to determining patentability here.
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`“Commission Engine”
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`A.
`PO argues that it acted as its own lexicographer for the term “commission
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`engine.” POR 17. But lexicography requires evidence of a clear intent to deviate
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`from the plain and ordinary meaning of a term: “When a patentee acts as his own
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`lexicographer in redefining the meaning of particular claim terms away from their
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`ordinary meaning, he must clearly express that intent in the written description.”
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`Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370, (Fed. Cir.
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`2005). Nothing in the ‘304 patent evidences such intent.
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`PO relies on a selective excerpt from the specification disclosing one
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`embodiment of a “commission engine,” but omits the preceding sentence that
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`makes clear that the functional description that follows is but a single embodiment
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`of a “commission engine”: “In accordance with one embodiment of the invention,
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`DMSS is built on top of a commission engine configured to model and calculate
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`commission.” Exh. 1001, 6:66-7:1. In fact, while the specification says in many
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`place what a “commission engine” does (Exh. 1001, 6:66-17, 7:18-20, 8:56-59,
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`8:60-64, 11:10-12, 11:39-42, 13:7-20), nowhere does it say what a “commission
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`engine” is. See, e.g., Bell Atl. Network Servs. v. Covad Commc’ns Grp., Inc., 262
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`F.3d 1258, 1268 (Fed. Cir. 2001). Because the ‘304 patent never expresses a clear
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`2
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`intent to redefine “commission engine” in a way that departs from the term’s plain
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`and ordinary meaning, PO’s argument fails.
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`In fact, PO’s proposed construction of “commission engine” is inconsistent
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`with the specification and claims of the ‘304 patent. The specification discloses
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`that the “commission engine” may use the backbone to gather information about
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`agreements, identify relevant data, generate payments, and/or calculate total earned
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`compensation. Exh. 1001, 8:56-59, 11:39-43, 13:5-20. None of these disclosed
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`functions are encompassed by PO’s proposed construction of “commission
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`engine.” PO’s proposed construction is also inconsistent with the plain language
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`of claims 15, 16, and 32. For example, claim 16 recites the further limitation that
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`the commission engine “generates commission schemes to model a set of selling
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`agreements,” suggesting that the “commission engine” of claim 15 need not
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`generate a commission scheme (or model) as required by PO’s proposed
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`construction. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.
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`Cir. 2004). PO’s proposed construction would amend its claims to add entirely
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`new limitations, including a “commission model” and “ledger items.” Using claim
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`construction to amend claims is inconsistent with BRI, and should be rejected.
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`Petitioner respectfully submits that construction of “commission engine” is
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`not necessary to determine the patent eligibility of the challenged claims. The
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`Board has already concluded (and PO does not dispute) that an “engine” is
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`“software that processes data for a stated function.” POR 16. For a “commission
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`engine,” that function is to determine a commission in accordance with other
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`limitations of the claims. See Exh. 1001, 17:20-21. None of the other limitations
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`of claims 15, 16, or 32 add in any meaningful way to tie down how the function –
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`determining a commission – is performed.
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` “Selling Agreement”
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`B.
`Petitioner respectfully submits that “selling agreement” has a plain and
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`ordinary meaning that requires no construction. The Board’s construction of “to
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`generate a selling agreement” implicitly recognized that a selling agreement is a
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`contract and further recognized that regardless of whose construction it adopted for
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`that term, the § 101 analysis remained undisturbed. ID 14-15. Now, PO urges a
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`schizophrenic construction of “selling agreement” that is both more abstract than
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`the plain and ordinary meaning of that term yet also seeks to import specific
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`limitations from the specification into the claims. PO’s proposed construction
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`should be rejected because it is unsupported by the intrinsic record and does
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`nothing to advance the §101 analysis here.
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`PO argues that a “selling agreement” should be construed as a
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`“representation of an agreement or contract” rather than the selling agreement or
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`contract itself. None of PO’s citations to the intrinsic record support this
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`abstraction away from a selling agreement or contract. In fact, claims 12 and 32,
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`4
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`CBM2013-00054
`which recite “data objects representative of…at least one selling agreement,”
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`demonstrate that where the patentee wanted to recite data objects representative of
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`a selling agreement (as compared to the agreement itself), it knew how to do that.
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`Coupled to that abstraction, PO advocates a 52-word construction of a two-
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`word term based on “specific lexicography.” POR 19. But PO never cites any
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`clearly expressed intent to redefine a selling agreement contrary to its ordinary
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`meaning to include the litany of specific limitations it recites. See Merck, 395 F.3d
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`at 1370. In fact, the very specification passage on which PO relies begins “in one
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`embodiment of the invention, each selling agreement defines…,” thus making
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`clear that this is one example of what a selling agreement does, not an all-purpose
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`definition of what a selling agreement is.
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`Moreover, because PO’s proposed construction would exclude other
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`disclosed features of a “selling agreement,” it cannot be correct. In discussing
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`other embodiments, the specification notes that a “selling agreement” includes
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`“bonus schedules, and documents describing the relationship” (Ex. 1001, 10:39-
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`42) and, likewise, that “firms must be able create customized contracts and selling
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`agreements by combining reusable compensation components and personalizing
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`agreement templates to fit individual producers.” Ex. 1001, 3:45-48 (emphasis
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`added). PO’s proposed construction excludes these concepts. Moreover, each of
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`claims 1, 12, 15-17, and 32 recite “selling agreement” used in various contexts,
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`none of which hint at the construction advocated by PO. The intrinsic record
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`supports the plain and ordinary meaning of “selling agreements.”
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`In any event, PO’s attempt to require a “selling agreement” to define specific
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`categories of information does nothing to make the challenged claims less abstract.
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`Even if the ‘304 patent expressly defined a “selling agreement” as a contract
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`between Prudential and a red-headed sales representative named “Doris” residing
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`in Maine, none of these additional adjectives make the underlying concepts of
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`validating a distributor to begin selling products or determining compensation for a
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`validated distributor any less abstract.
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`“Interface” for Obtaining a Plurality of Business Rules
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`C.
`PO does not contend that claim construction of “interface” is necessary for
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`the Board to determine whether the challenged claims are unpatentably abstract.
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`POR 24. Nor can it since PO argues that Petitioner’s construction is too narrow,
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`yet even under that narrower definition as adopted by the Board, the claims using
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`that term were found likely to be unpatentably abstract. The Board determined in
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`its Institution Decision that an “interface” means “browser-based gateway for a
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`user to manage the DMSS applications.” ID 17-18. After seeking no construction
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`in its Preliminary Patent Owner Response (“PPOR” 26-27), PO now seeks to
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`simply restate “interface” or “a communication or user interface.” POR 25. This
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`construction fails to provide any further clarity for the broad term. PO’s new
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`proposal should be rejected; the Board’s prior construction is correct.
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`III. CLAIMS 1, 12, AND 32 ARE DIRECTED TO ABSTRACT IDEAS
`The Supreme Court in Alice was very clear about the standard that should be
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`used to determine patent eligibility under § 101: “First, we determine whether the
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`claims at issue are directed to one of those patent-ineligible concepts. . . . If so, we
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`then ask, ‘[w]hat else is there in the claims before us?’” Alice Corp. Pty. Ltd. v.
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`CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quotations omitted). The Institution
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`Decision is consistent with Alice, which reaffirms the patent ineligibility of the
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`present claims. Here, the abstract idea of claim 12 is validating a distributor to
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`begin selling products. ID 20; Pet. 29-43. The abstract idea of claims 1 and 32 is
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`determining compensation for a validated distributor. ID 24, 25; Pet. 43-61.
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`Contrary to the clear authority of Alice and its predecessors, PO argues that
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`claims are invalid under § 101 only where Petitioner can prove the claims are
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`directed to a “fundamental economic practice.” POR 29-34. Indeed, PO
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`incorrectly asserts that “it would seem appropriate for the Board to restrict its
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`deliberation to the final inquiry, fundamental economic practices.” POR at 31.
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`This is an invitation to err. While the specific abstract ideas of Alice, Mayo, Bilski,
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`Benson, and Flook offer “guideposts,” nothing therein limits the categories of
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`patent ineligible abstract ideas to those specific examples.
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`In fact, the Supreme Court roundly rejected exactly this line of argument in
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`Alice: “petitioner contends that the abstract-ideas category is confined to
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`preexisting, fundamental truths that exist in principle apart from any human
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`action. . . . Bilski belies petitioner’s assertion.” Alice at 2356 (emphasis added,
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`quotations and modification omitted). PO does not even attempt to explain how
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`validating a distributor to begin selling products or determining compensation for a
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`validated distributor is different in kind than “managing a stable value protected
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`life insurance policy” (Bancorp at 1280-81), a “fraud detection method”
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`(Cybersource at 1376), “risk hedging” (Bilski at 3231), or “intermediated
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`settlement” (Alice at 2355).2 In fact, it is not. PO provides no explanation for why
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`an abstract idea regarding a mundane or ordinary economic practice should be
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`more deserving of patent protection (and thus, patent eligibility) than an abstract
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`idea directed to a “fundamental economic practice.” Indeed, to state the premise is
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`to undermine it. The only proper inquiry is whether the claims are directed to an
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`abstract idea;3 PO’s attempts at misdirection should be ignored.4
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`2 Notably, in none of those cases did the court make any findings regarding the
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`“fundamental nature” of the economic practice at issue in those cases
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`3 Both Alice and the Preliminary Examiner Guidelines agree that a fundamental
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`economic practice is one of several examples of an unpatentable abstract idea, but
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`that abstract ideas are not limited to a particular category. Exh. 2016 at 2-3.
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`Petitioner’s Reply to Patent Owner Response
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`PO also mistakenly adopts preemption as a test for patent eligibility. E.g.
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`POR 36. However, Alice makes clear that pre-emption is a policy concern
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`justifying the limits on patent eligibility, but is not itself a test for patentability.
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`See Alice at 2354 (“Laws of nature, natural phenomena, and abstract ideas are not
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`patentable. . . . We have described the concern that drives this exclusionary
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`principle as one of pre-emption.”).
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`PO argues that because the claims recite “system claims,” the claims are
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`thereby patent eligible machines. POR 25. This argument is flatly contradicted by
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`Alice and Cybersource, which hold that the ordinary use of a computer does not
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`make an abstract idea patent-eligible. Alice at 2351 (“petitioner’s system and
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`media claims add nothing of substance to the underlying abstract idea”);
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`Cybersource at 1374 (“Regardless of what statutory category . . . a claim’s
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`language is crafted to literally invoke, we look to the underlying invention for
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`patent-eligibility.”). Here, the mere fact that the claims are directed to a “system”
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`is insufficient to impart patent eligibility.
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`4 Even if the “fundamental nature” of an economic practice were relevant to the
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`§101 analysis (which it is not), PO itself offers no evidence to rebut the only
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`evidence of record, which shows the importance of validating transactions and
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`distributors. E.g., Exh. 1012 ¶¶16-17, 21.
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`Petitioner’s Reply to Patent Owner Response
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`IV. THE REMAINDER OF CLAIMS 1, 12 & 32 DO NOT TRANSFORM
`THE ABSTRACT IDEAS INTO PATENT-ELIGIBLE CLAIMS
`PO argues claims 1, 12, and 32 are patent eligible based on the “additional
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`features” of claim limitations only present if the PO’s proposed constructions of
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`“selling agreement” and “commission engine” are adopted. POR 35-42. Because
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`PO does not argue that other claim limitations tie down the claims, PO admits that
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`there is nothing “significantly more” in these claims than what it adds through its
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`improper claim constructions.
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`The POR discusses at some length the purported problems in the art were
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`addressed by `304 patent, including “web-centric dynamic pricing and product
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`configuration applications” and “agile business practices.” POR at 6, 7, 9, 11-12.
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`But the POR fails to connect any of the purported challenges to any solution in the
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`system as claimed. Therefore, this background discussion has no relevance to the
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`patentability of the challenged claims.
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`Moreover, as discussed above in Section II, even if PO’s claim constructions
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`for “selling agreement” or “commission engine” were adopted, neither term adds
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`meaningfully to the abstract idea of the challenged claims.
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`CyberSource and Bancorp are highly relevant to the claims of the ‘304
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`patent. PO’s statement that “Bancorp is similar [to CyberSource] – the claims, on
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`their face, did not implicate or even recite a computer” is simply false. POR 51.
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`In fact, the Federal Circuit invalidated method, system, and computer-readable
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`medium claims that explicitly recited or required a computer. In Bancorp, one of
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`the independent claims recited a “computer system for administering an existing
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`life insurance policy.” Bancorp at 1271; Exh. 1015, 17:52-55. In Bancorp, the
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`Federal Circuit even noted that “particular computing devices” “such as a
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`‘generator,’ a ‘calculator,’ and ‘digital storage’” were required. Bancorp at 1274.
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`Other independent claims recited “computer readable media for controlling a
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`computer,” and were also invalidated. Bancorp at 1271; Exh. 1016, (cl. 18); see
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`also Exh. 1015, (cls. 18, 63). Likewise, in CyberSource, invalidated independent
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`claim 2 recited “a computer readable medium” that required “execution of the
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`program instruction by one or more processors of a computer system.”
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`CyberSource at 1373-74; Exh. 1017 (cl. 2). The Federal Circuit treated claim 2 no
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`differently than the abstract method of claim 3 that did not recite a computer:
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`“Here, the incidental use of a computer to perform the mental process of claim 3
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`does not impose a sufficiently meaningful limit on the claim’s scope.”
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`CyberSource at 1375. These holdings are consistent with Alice, where the
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`challenged patents were directed to a “computer-implemented scheme,” and where
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`each of the method, system, and media claims were held unpatentable as directed
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`to abstract ideas. Alice at 2360.
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`PO compares the present claims to those of Diehr (e.g. POR 13, 27, 49), but
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`the claimed invention of Diehr is wholly different than the claimed subject matter
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`here. As noted in Alice, “the claims in Diehr were patent eligible because they
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`improved an existing technological process, not because they were implemented on
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`a computer.” Alice at 2358. Here, claims 1, 12, and 32 take a process that can be
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`performed by hand and implement it generally on a computer.
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`V. THE DEPENDENT CLAIMS ARE ALSO DIRECTED TO NON-
`PATENTABLE SUBJECT MATTER
`PO’s arguments with respect to the dependent claims are premised entirely
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`on PO’s incorrect constructions of “selling agreement” and “commission engine.”
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`POR 42-46. As discussed in Sections II.A, II.B, and IV, supra, these constructions
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`are unsupported and, in any event, do not tie down the abstract idea of the claim.
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`VI. PETITIONER WAS NOT BARRED FROM FILING ITS PETITION
`As the Board has already held, Petitioner is not estopped from challenging
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`the claims on the grounds identified in the Petition. ID 9-12; Decision on Request
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`for Rehearing, Paper No. 25 at 2-6 (April 9, 2014). Petitioner’s second-filed
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`declaratory judgment (“DJ”) action did not bar Petitioner from filing its Petition.
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`First, according to 37 C.F.R. §§ 42.300 et seq., 35 U.S.C. § 325(a)(1) does
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`not apply to CBM Review. This is because 37 C.F.R. § 42.201—the rule
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`promulgated by the Director of the USPTO to implement 35 U.S.C. § 325(a)(1)—
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`is explicitly carved out of CBM Review by 37 C.F.R. § 42.300(a). 37 C.F.R.
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`§§ 42.300; Exh. 1008 at 48691. The Director’s rulemaking that resulted in 37
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`C.F.R. § 42.300(a) was authorized under AIA § 18(a)(1). See id. at 48680; see
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`Petitioner’s Reply to Patent Owner Response
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`also Exh. 2008 at S5428 (Sen. Leahy) (emphasis added). In that regard, the
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`Director found that the exceptions set forth in § 42.300(a) were “consistent with
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`section 18(a)(1) of the AIA.” Exh. 1008 at 48693. The Director’s rulemaking is
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`consistent with the statutory mandate and entitled to deference.5 See Chevron
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`U.S.A. v. Natural Res. Def. Council, 467 U.S. 837, 843-44 (1984); see also Ethicon
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`Inc. v. Quigg, 849 F.2d 1422, 1425 (Fed. Cir. 1988).
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`Contrary to PO’s argument, nothing in AIA § 18 incorporates Chapter 32 in
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`its entirety for CBM Review. In fact, such incorporation would result in statutory
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`conflicts with other provisions of Section 18. Compare, e.g. 35 U.S.C. § 321(a)
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`with AIA § 18(a)(1)(B); compare also 35 U.S.C. § 321 (b) with AIA §
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`18(a)(1)(C)(i) and (ii). Where an “interpretation directly conflicts with the
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`language of the statute,” it must be rejected. Princess Cruises, Inc. v. United
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`States, 201 F.3d 1352, 1362-63 (Fed. Cir. 2000).
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`In addition, as the Board found in its Institution Decision (ID 9-12) and
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`Decision on Request for Rehearing, Paper No. 25 (“Rehearing Denial”),
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`Petitioner’s DJ action is properly treated as something that de jure never existed,
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`5 While the PTAB’s recent decision in SecureBuy tacitly assumed that 35 U.S.C.
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`§ 325(a)(1) applies to Section 18 proceedings, the issue was not raised or argued
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`by either party there. See SecureBuy, LLC v. Cardinalcommerce Corp.,
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`CBM2014-00035, Paper No. 12, 3 (P.T.A.B. Apr. 25, 2014).
`
`
`
`13
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
`leaving the parties as though the action had never been brought. See Rehearing
`
`Denial at 3-6, and authority cited therein. Petitioner was never in a position to
`
`litigate invalidity on multiple fronts simultaneously; Petitioner’s DJ complaint was
`
`filed (but never served) and dismissed without prejudice by May 2013, more than
`
`three months before Petitioner filed its petition for CBM Review. See Exhs. 2001,
`
`2003.
`
`SecureBuy, the only precedential case addressing § 315(a) or § 325(a), is
`
`distinguishable. There, SecureBuy had filed two separate DJ actions two weeks
`
`before filing its petition for CBM Review, and those actions were still ongoing
`
`long after the petition was filed. Decision Denying Institution of Covered Business
`
`Method Patent Review, Paper No. 12 at 3, SecureBuy, LLC v. Cardinalcommerce
`
`Corp., CBM2014-00035 (P.T.A.B. Apr. 25, 2014); see Exhs. 1018 and 1019. The
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`Board’s decision is also consistent with the legislative history that expressed
`
`concern about parallel litigation tactics or “abusive serial challenges to patents.”
`
`Exh. 2006 at S1363 (Sen. Schumer); Exh. 2009 at S952 (Sen. Grassley). None of
`
`those concerns are implicated where there has been a voluntary dismissal.
`
`Finally, even if § 325(a) applied here, Petitioner’s second-filed DJ action is
`
`properly characterized as an excepted counterclaim within the meaning of §325(a).
`
`See 35 U.S.C. § 325(a)(3). PO sued Petitioner first in the District of Delaware.
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`Petitioner’s standing for its second-filed DJ action in California was explicitly
`
`
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`14
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`
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
`based on PO’s first-filed action.6 Exh. 2001 ¶ 9. PO does not dispute that
`
`Petitioner’s DJ counterclaim action was a mirror image of PO’s earlier filed patent
`
`infringement claim, and both parties understood and agreed that it could not
`
`proceed in parallel. Exh. 1020 at 1; Exh. 1021; Exh. 1022. And once the motion
`
`to transfer was resolved, Petitioner voluntarily dismissed its second filed DJ claim
`
`and added precisely the same DJ claim as a counterclaim to PO’s first filed
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`Delaware action. Exh. 1023.
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`VII. CONCLUSION
`Because Petitioner has demonstrated the patent ineligibility of each claim,
`
`under any of the proposed constructions, claims 1, 12-25, 30-32, and 42-43 of the
`
`‘304 patent should be cancelled.
`
`
`6 Petitioner’s second-filed DJ counterclaim action was filed for the express purpose
`
`of anchoring venue (in response to Patent Owner’s cross-motion for transfer) until
`
`the Delaware Court (the first-filed action) had an opportunity to rule on the then-
`
`pending motion for transfer. Exh. 1024 at 4, n.1; Exh. 1025.
`
`
`
`15
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`
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
`
`August 22, 2014
`
`Respectfully Submitted,
`
` /
`
` Deborah E. Fishman /
`Deborah E. Fishman (Reg. No. 48,621)
`Jeffrey A. Miller (Reg. No. 35,287)
`Assad H. Rajani (admitted pro hac vice)
`Michael S. Tonkinson (admitted pro hac
`vice)
`DICKSTEIN SHAPIRO LLP
`1841 Page Mill Road, Suite 150
`Palo Alto, CA 94304
`Phone: (650) 690-9500
`Fax: (650) 690-9501
`Email: fishmand@dicksteinshapiro.com
` millerj@dicksteinshapiro.com
` rajania@dicksteinshapiro.com
` tonkinsonm@dicksteinshapiro.com
`
`
`Attorneys for Petitioner
`CALLIDUS SOFTWARE INC.
`
`
`16
`
`Dated:
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`
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`
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`Petitioner’s Reply to Patent Owner Response
`CBM2013-00054
`
`
`
`The undersigned certifies that the foregoing PETITIONER’S REPLY TO
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`PATENT OWNER RESPONSE and associated Exhibits 1015-1025 were served
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`on Patent Owner on August 22, 2014, via electronic filing in the Patent Review
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`Processing System.
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`
`
`
`
`
`
`
`
`/ Deborah E. Fishman /
`Deborah E. Fishman
`Reg. No. 48,621
`
`
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`1
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`
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