UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 8,805,825
`
`CBM Case No.: 2016-00100
`
`
`
`______________
`
`
`
`FORD’S REPLY IN SUPPORT OF ITS
`PETITION FOR REHEARING
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 8,805,825
`
`CBM Case No.: 2016-00100
`
`
`
`______________
`
`
`
`FORD’S REPLY IN SUPPORT OF ITS
`PETITION FOR REHEARING
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`The Board should strike Versata’s Response because it violates the Board’s
`
`Order in two respects. First, Versata devotes just a page (Section II) to Rembrandt,
`
`disregarding
`
`the Board’s Order
`
`limiting the Response to “addressing . . .
`
`Rembrandt.” (Paper 14, p. 4.) Second, to gain more space, Versata used 28-point
`
`spacing rather than the required double-spacing for its Response (compare the line
`
`spacing in Paper 6 with that in Paper 15), flouting the Board’s page limitation. (Ex.
`
`2013 at 11:18-25; 37 C.F.R. § 42.6(a)(2)(iii).)
`
`In Rembrandt, the Federal Circuit held that a statutory disclaimer only
`
`enlarges the public’s rights; a Patent Owner cannot use disclaimer to diminish those
`
`rights. Rembrandt Wireless Techs., LP v. Samsung Electrs. Co., 853 F.3d 1370,
`
`1384 (Fed. Cir. 2017). Rembrandt is not merely about the effect of disclaimers on
`
`the marking statute, as Versata asserts. Rather, Rembrandt cites decisions from a
`
`range of litigation and administrative matters, all rejecting a patent owner’s effort to
`
`limit others’ rights by disclaiming claims. Id. The core principle in the cases is: Once
`
`rights are held by a member of the public, they cannot be rescinded by disclaimer.
`
`Id. Versata’s disclaimer did not rescind Ford’s rights to pursue the CBM.
`
`By suing Ford for infringement, Versata gave Ford the right to seek CBM
`
`review. CBMs differ from the other post-grant reviews because a patent is insulated
`
`from CBM review until the Patent Owner has made a charge of infringement. AIA
`
`§ 18(a)(1)(B). Once Ford had the right to seek CBM review, Versata could not—
`
`1
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`retroactively—extinguish that right, especially where Versata made its disclaimer
`
`only after Ford filed its Petition.
`
`Rembrandt is not inconsistent with 37 C.F.R. § 42.207(e), which states that
`
`“[n]o post-grant review will be instituted based on disclaimed claims.” The PTO’s
`
`explanation of that Rule clarifies that its purpose is simply to ensure that “no post-
`
`grant review will be instituted to review disclaimed claims.” 77 Fed. Reg. 48,680,
`
`48,692 (Aug. 14, 2012) (emphasis added). Ford does not seek a “review [of]
`
`disclaimed claims” 5, 10, and 15—Ford seeks review of the remaining claims.
`
`Because of its disclaimer, Versata can no longer pursue infringement with
`
`respect to the disclaimed subject matter (i.e., configuration of “products from the
`
`group comprising: vehicles, computers, and financial products”); indeed, Judge
`
`Arpin was correct that the “disclaimer of claims 5, 10, and 15 also narrowed the
`
`scope of claims 1, 6, and 11.” (Paper 12, Arpin, APJ concurring, p. 7.). However,
`
`as Rembrandt makes clear, Versata’s disclaimer does not diminish Ford’s (and the
`
`public’s) rights–including the right to seek CBM review. Therefore, for purposes of
`
`determining whether to institute a CBM, the Board must treat the remaining claims
`
`as encompassing such “financial products” –which the claims encompassed before
`
`the disclaimer—irrespective of the “products” that Versata dedicated to the public.
`
`
`Dated: May 16, 2017
`
`
`
`
`
`
` /Christopher C. Smith/
`Christopher C. Smith (Reg. No. 59,669)
`
`2
`
`
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`John S. LeRoy (Reg. No. 48,158)
`Thomas A. Lewry (Reg. No. 30,770)
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`Jonathan D. Nikkila (Reg. No. 74,694)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`3
`
`
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that the foregoing Ford’s Reply in Support
`of its Petition for Rehearing, including all exhibits and supporting evidence, was
`served in its entirety on May 16, 2017, upon the following parties by electronic mail
`at
`PTAB@skgf.com,
`rsterne-PTAB@skgf.com;
`sbezos-PTAB@skgf.com;
`holoubek@skgf.com;
`jmutsche-PTAB@skgf.com;
`jtuminar-PTAB@skgf.com;
`kchambers@tcchlaw.com; sharoon.saleem@jonesspross,com:
`
`Lead Counsel
`Robert Greene Sterne
`Reg. No. 28,912
`rsterne-PTAB@skgf.com
`STERNE, KESSLER,
`GOLDSTERN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`Back Up Counsel
`Salvador M. Bezos, Reg. No. 60,889
`Michelle K. Holoubek, Reg. No. 54,179
`Joseph E. Mutschelknaus, Reg. No. 63,285
`Jonathan Tuminaro, Reg. No. 61,327
`STERNE, KESSLER, GOLDSTEIN &
`FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`Back Up Counsel
`Sharoon Saleem, Reg. No. 63,711
`Sharoon.saleem@jonesspross,com
`JONES & SPROSS, P.L.L.C.
`1605 Lakecliff Hills Ln., Suite 100
`Austin, TX 78732-2437
`
`
`
`Respectfully submitted,
`
`
` /Christopher C. Smith/
`Christopher C. Smith (Reg. No. 59,669)
`John S. LeRoy (Reg. No. 48,158)
`Thomas A. Lewry (Reg. No. 30,770)
`Frank A. Angileri (Reg. No. 36,733)
`
`4
`
`Back Up Counsel
`Kent B. Chambers
`Reg. No. 38,839
`kchambers@tcchlaw.com
`TERRILE, CANNATTI,
`CHAMBERS, HOLLAND, L.L.P.
`11675 Jollyville Road, Suite 100
`Austin, TX 78759
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No.: CBM 2016-00100
`Patent No.: 8,805,825
`
`Atty. Dkt. No.: FPGP0130CBMR1
`
`John P. Rondini (Reg. No. 64,949)
`Jonathan D. Nikkila (Reg. No. 74,694)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Attorneys for Petitioner
`
`
`
`
`
`5
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`
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