`Tel: 571-272-7822
`
`Paper 7
`Entered: May 8, 2014
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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
`
`
`Cases CBM2014-00117 (Patent 7,908,304 B2)
`CBM2014-00118 (Patent 7,958,024 B2)1
`
`
`
`Before HOWARD B. BLANKENSHIP and SALLY C. MEDLEY,
`Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses a similar issue in the two cases. Therefore, we
`exercise discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style of heading in subsequent
`papers.
`
`
`
`Cases CBM2014-00117 & CBM2014-00118
`
`
`On May 7, 2014, a conference call was held including counsel for the
`respective parties and Judges Medley and Blankenship. The purpose of the
`call was for Petitioner to seek authorization to file a motion to modify the
`three-month due date, set under 37 C.F.R. § 42.207(b), for Patent Owner to
`file its preliminary responses. Times set by rule are default and may be
`modified by order. 37 C.F.R. § 42.5(c).
`Petitioner pointed out that the patents challenged in these proceedings
`are the same as those challenged in cases CBM2013-00053 (Patent
`7,958,024 B2) and CBM2013-00054 (Patent 7,908,304 B2). Petitioner
`argued that requiring Patent Owner to file its preliminary responses in these
`proceedings earlier than the present default date of July 24, 2014 would
`increase the efficiency of the four proceedings because common or related
`issues in the cases could be considered at the same time. Petitioner further
`argued that, in the related proceedings, Patent Owner’s preliminary
`responses were limited to the argument that 35 U.S.C. § 325(a)(1) barred
`institution of covered business method patent review of the challenged
`patents. Lastly, Petitioner argued that expediting the preliminary response in
`these two cases could lead to a quicker resolution in the related District
`Court litigation.
`Patent Owner opposed granting authorization to file the motion.
`Patent Owner pointed out that the rules did not require that it file a
`preliminary response and, in any event, Petitioner cannot control what its
`response to the Petitions might be. Patent Owner also argued that the
`Petitions in the instant proceedings were filed several months after the
`Petitions were filed in the related cases (April 17, 2014 and August 29,
`2013, respectively).
`
`2
`
`
`
`Cases CBM2014-00117 & CBM2014-00118
`
`
`In the conference call, we noted that even if Patent Owner were to file
`preliminary responses within two weeks or less, the trials in the related cases
`are well underway and it would be impractical to set due dates near to those
`in the related cases, assuming that trials are instituted in these proceedings.
`Specifically, decisions to institute trials in the related cases were entered
`March 4, 2014. DUE DATE 1, when Patent Owner may file responses to
`the respective Petitions and motions to amend the patents, is currently set, by
`stipulation of the parties, at June 10, 2014 – about one month from now. See
`CBM2013-00053, Paper 25; CBM2013-00054, Paper 28. Depositions by
`Patent Owner are scheduled about two weeks from now. See CBM2013-
`00053, Papers 23, 24; CBM2013-00054, Papers 26, 27.
`We determined that Petitioner had not shown good cause to modify
`the default due date for Patent Owner’s preliminary responses under 37
`C.F.R. § 42.207(b). Accordingly, we indicated that Petitioner was not
`authorized to file a motion to modify the default due date. Patent Owner
`may file or waive preliminary responses in these proceedings in accordance
`with the due date set forth by 37 C.F.R. § 42.207(b).
`
`Accordingly, it is
`
`ORDERED that Petitioner’s request to file a motion to modify
`the default due date for Patent Owner’s preliminary responses is denied.
`
`3
`
`
`
`Cases CBM2014-00117 & CBM2014-00118
`
`PETITIONER:
`Deborah Fishman
`DICKSTEIN SHAPIRO LLP
`fishmand@dicksteinshapiro.com
`
`
`PATENT OWNER:
`
`Kent Chambers
`TERRILE, CANNATTI,
`CHAMBERS & HOLLAND LLP
`kchambers@tcchlaw.com
`
`
`David O’Brien
`John Russell
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`
`
`
`4
`
`
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