UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
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`Petitioner
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`V.
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`VERSATA DEVELOPMENT GROUP, INC.
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`Patent Owner.
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`Case CBMZOlé—OOIOO
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`Patent No. 8,805,825
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`VERSATA’S OPPOSITION TO FORD’S REQUEST FOR REHEARING
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
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`Alexandria, VA 22313—l450
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
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`Petitioner
`
`V.
`
`VERSATA DEVELOPMENT GROUP, INC.
`
`Patent Owner.
`
`Case CBMZOlé—OOIOO
`
`Patent No. 8,805,825
`
`VERSATA’S OPPOSITION TO FORD’S REQUEST FOR REHEARING
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313—l450
`
`
`
`Page 1
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`CBM2016—00100
`Patent No. 8,805,825
`
`To succeed on rehearing, Ford must demonstrate that the Board abused its
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`discretion in declining to institute this CBM proceeding. See 37 C.F.R. § 42.71(c).
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`Ford does not acknowledge or meet this burden. Ford’s rehearing request hinges on
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`a case—Rembrandt Wireless Techs., LP 12. Samsung Electronics Co., Ltd, 2017
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`WL 1370089 (Fed. Cir. Apr. 17, 2017)——that has nothing to do with the scope of
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`CBM patent review; as such,
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`the Board could not have misapprehended or
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`overlooked it in deciding whether to institute. Rembrandt interprets the marking
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`requirement in 35 U.S.C. § 287, which has an entirely different purpose, entirely
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`different language, and an entirely different effect than the requirements for CBM
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`review in § 18 of the AIA. F ord’s rehearing request should be denied.
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`I.
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`Disclaimer of A Claim Under 35 U.S.C. § 253(a) Causes The Claim to
`Be Treated As If It Had Never Existed For Jurisdictional Purposes.
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`The Federal Circuit has made clear that disclaimer of claims under 35
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`U.S.C. § 253 “effectively eliminate[s]
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`those claims from the original patent.”
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`Vectra Fitness, Inc. v. TNWK Corp, 162 F.3d 1379, 1383 (Fed. Cir. 1998). Thus,
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`upon a disclaimer under§ 253, the disclaimed claims are treated as though they
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`had “never existed.” Genetics Inst, LLC v. Novartis Vaccines & Diagnostics, Inc,
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`655 F.3d 1291, 1299 (Fed. Cir. 2011). That is because, “[u]pon the filing of the
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`disclaimers, the original claims were withdrawn from the protection of the patent
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`laws.” Altoona Publix Theatres v. Am. Tri-Ergon Corp, 294 US. 477, 492 (1935).
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`Because the disclaimed claims “never existed,” a tribunal’s jurisdiction
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`cannot be based on those claims. For example, courts routinely dismiss cases for
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`want of jurisdiction when the claims of the patent—in—suit are disclaimed. See
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`
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`Page 2
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`CBM2016—00100
`Patent No. 8,805,825
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`Merck & Ca, Inc. V. Apotex, Inc., 2007 WL 4082616, at *5 (D.N.J. NOV. 15,
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`2007), afl’a’, 292 F. App’x 38 (Fed. Cir. 2008) (finding no jurisdiction, “because
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`Merck has formally disclaimed the ’735 and ’443 patents, and can no longer
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`enforce any claims as to these patents”); 3V, Inc. v. CIBA Specialty Chemicals
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`Corp, 587 F. Supp. 2d 641, 645—46 (D. Del. 2008) (same).
`
`Like court proceedings, CBM proceedings are “adversarial [in] nature,” PPC
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`Broadband, Inc. v. Corning Optical Comrnc’ns RF, LLC, 815 F.3d 734, 741 (Fed.
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`Cir. 2016), and the Board has a strictly limited jurisdiction over them, Versata Dev.
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`Grp., Inc. v. SAP Am, Inc., 793 F.3d 1306, 1320 (Fed. Cir. 2015). And, just as a
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`court’s jurisdiction cannot be based on disclaimed claims, the Board’s jurisdiction
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`over CBM proceedings cannot be predicated on disclaimed claims.
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`The Office
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`explicitly
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`recognized
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`this
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`jurisdictional
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`limitation
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`in
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`promulgating 37 C.F.R. § 42.207(e). That regulation, which falls under the heading
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`“preliminary response to petition,” provides that, in response to a petition, “[t]he
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`patent owner may file a statutory disclaimer
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`disclaiming one or more claims in
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`the patent. No post-grant review will be instituted based on disclaimed claims.”
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`The plain meaning of these words is that a post—grant review (including a CBM
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`proceeding) cannot be instituted based on a disclaimed claim.1
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`Here,
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`in response to Ford’s petition and in accordance with § 42.207(e),
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`1 This regulation does not mean only that a CBM proceeding cannot be
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`instituted “on” a disclaimed claim. That would improperly “read[] language out of
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`the regulation.” Gose v. US. Postal Serv., 451 F.3d 831, 840 (Fed. Cir. 2006).
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`
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`Page 3
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`CBM2016—00100
`Patent No. 8,805,825
`
`Versata disclaimed any claim that could plausibly come within the scope of a
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`covered business method patent.2 Thus, the Board did not abuse its discretion in
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`declining to institute this CBM review. See Broadsign Int ’1, LLC v. T~Rex Property
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`AB, No. CBM2017—00008, Paper 7 (Apr. 26, 2017) (declining to institute CBM
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`proceeding based on disclaimed claims post-Rembrandt).
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`II.
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`Rembrandt Is Irrelevant To Whether The Board Has Jurisdiction To
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`Institute A CBM Proceeding.
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`Despite this clear rule, Ford argues that the decision in Rembrandt requires
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`the Board to institute review based on the disclaimed claims. It does not.
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`Rembrandt concerned the marking statute. That statute is not a jurisdictional
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`limitation on a court. Rather, it is a permissive statute under which, if a patentee
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`wishes to obtain pre—notice damages, the patentee must mark its products that
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`practice the patent. Rembrandt, 2017 WL 1370089, at *8. The statute’s goal is to
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`ensure that the public has a right to practice an unmarked feature of a device until
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`it has notice of the patent. Id. at *9. In accord with that notice function, § 287 is
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`written broadly to require notice sufficient to trigger damages whenever anyone is
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`“making, offering for sale, or selling within the United States any patented article.”
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`2 Pursuant to the Board’s order on briefing [Paper 14], Versata limits its
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`arguments to addressing the Federal Circuit’s decision in Rembrandt. Versata
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`notes, however, that adopting Ford’s arguments on why the non—disclaimed claims
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`fall within the scope of CBM review would vitiate the Federal Circuit’s decision in
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`Unwired Planet, LLC v. Google, Inc, 841 F.3d 1376 (Fed. Cir. 2016).
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`
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`Page 4
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`CBM2016-00100
`Patent No. 8,805,825
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`35 U.S.C.
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`§ 287(a). The Federal Circuit held that
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`it would “undermine[] the
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`marking statute’s public notice function” if a patentee could retroactively undo its
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`obligation to mark by disclaiming a practiced claim. Rembrandt, 2017 WL
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`1370089, at *9. The point is that the patentee did, at one time, make an article that
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`practiced an existing claim, and the public was entitled to copy that article until
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`given notice—and the patentee cannot use disclaimer to avoid giving that notice.3
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`In contrast, there is no “public notice” contemplated by § 18 of the AIA.
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`Either a patent falls in the scope of CBM review or it does not. The public does not
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`have investment-backed expectations of whether a patent claim is eligible for CBM
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`review. Further, disclaimer of a claim cannot retroactively create any unfairness to
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`the public. On the contrary, disclaimers best serve the public by dedicating the
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`claimed inventions to the public. The Board should not discourage such
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`disclaimers by allowing disclaimed claims to be used as the basis for CBM review.
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`Date: May 9, 2017
`
`By:
`
`W
`
`Robert Greene Sterne (Reg. No. 28,912)
`Lead Counsel for Patent Owner
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`3 The other case cited by Ford—Guinn v. Kopf, 96 F.3d 1419 (Fed. Cir.
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`l996)—is also irrelevant. In that case, unlike here, the patentee did not disclaim
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`the claims until after declaration of the interference. Id. at 1421. The Federal
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`Circuit held that the broad statute giving the Office the power to declare an
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`interference allowed the Office to enter an adverse final judgment against a
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`patentee who disclaimed the only claim in the interference. Id. at 1422. And, unlike
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`here, there was no regulation such as § 42.207(e) limiting the Office’s jurisdiction.
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`
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`CERTIFICATE OF SERVICE 137 C.F.R. § 42.6gen
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`The undersigned hereby certifies that a true and correct copy Of the enclosed
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`VERSATA’S OPPOSITION TO FORD’S REQUEST FOR REHEARING
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`was served electronically Via e—mail on May 9, 2017 in its entirety on the following
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`counsel of record for Petitioner:
`
`Christopher C. Smith (Lead Counsel)
`Thomas A. Lewry (Back—up Counsel)
`John S. LeRoy (Back-up Counsel)
`Frank A. Angileri (Back—up Counsel)
`John P. Rondini (Back—up Counsel)
`Jonathan D. Nikkila (Back-up Counsel)
`BROOKS KUSHMAN RC.
`
`1000 Town Center, Twenty-Second Floor
`Southfield, Michigan 48075
`FPGP013 OCBMRl @brookskushmancom
`
`Respectfully submitted,
`
`Date: May 9, 2017
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1 100 NEW YORK AVENUE, NW
`
`WASHINGTON, DC. 20005
`
`(202) 371 -2600
`
`Lead Counselfor Patent Owner
`Versata Development Group, Inc.
`
`
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