Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: December 29, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01176 (Patent 5,978,594)
`Case IPR2015-01211 (Patent 7,617,073 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`Paper 15
`Entered: December 29, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01176 (Patent 5,978,594)
`Case IPR2015-01211 (Patent 7,617,073 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`On December 22, 2015, a conference call was conducted between
`respective counsel for the parties and Judges Arbes, Murphy, and Hudalla.
`Petitioner, ServiceNow, Inc., was represented by Heidi L. Keefe, Phillip E.
`Morton, and Andrew C. Mace. Patent Owner, BMC Software, Inc., was
`represented by Pierre Hubert and Phillip Lee. This call dealt with three
`topics: (a) the scheduling order, (b) ServiceNow’s requests for authorization
`to file motions to submit supplemental information in both of the instant
`cases, and (c) BMC’s proposed motions.
`
`Scheduling Order
`A.
`The parties indicated there are no problems with the Scheduling Order
`
`in these cases and that each party’s lead counsel will be available on the
`scheduled date for Oral Argument, August 19, 2016. Case IPR2015-01176,
`Paper 11; Case IPR2015-01211, Paper 12. The parties were reminded that
`they are free to stipulate to different dates for Due Dates 1–5, but not for
`Due Dates 6–7, as provided in the Scheduling Order. Any such stipulation
`must be filed with the Board.
`
`B.
`
`ServiceNow’s Requests for Authorization to File Motions to Submit
`Supplemental Information
`Pursuant to 37 C.F.R. § 42.123(a), ServiceNow seeks authorization to
`
`file motions to submit supplemental information related to certain prior art
`references in these cases:
`Case IPR2015-01176
`Case IPR2015-01176
`Case IPR2015-01211
`
`“Coffin”/“Unix System V” Ex. 1004
`“Inside Macintosh”
`Ex. 1005
`“Lewis”
`Ex. 1004
`
`2
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`Case IPR2015-01176, Paper 14, 2; Case IPR2015-01211, Paper 15, 2. BMC
`has objected to these references as lacking authentication and containing
`hearsay, among other things. Case IPR2015-01176, Paper 12 § B; Case
`IPR2015-01211, Paper 13 § C. By its proposed motions, ServiceNow
`intends “to submit additional evidence that would remove any alleged
`evidentiary defect regarding the prior art status of these references.” Case
`IPR2015-01176, Paper 14, 1; Case IPR2015-01211, Paper 15, 2.
`Counsel for ServiceNow indicated that ServiceNow has served, as
`supplemental evidence, much of the same evidence it now seeks to submit
`via its proposed motion. ServiceNow also intends to serve the remaining
`evidence (pertaining to the Lewis reference) that would be the subject of the
`motion within the next several days.
`The Board has previously explained the difference between
`supplemental evidence under 37 C.F.R. § 42.64(b)(2) and supplemental
`information under 37 C.F.R. § 42.123(a):
`[S]upplemental evidence—served in response to an evidentiary
`objection and filed in response to a motion to exclude—is
`offered solely to support admissibility of the originally filed
`evidence and to defeat a motion to exclude that evidence, and
`not to support any argument on the merits (i.e., regarding the
`patentability or unpatentability of a claim). Supplemental
`information, on the other hand, is evidence a party intends to
`support an argument on the merits.
`Handi Quilter, Inc. v. Bernina Int’l AG, Case IPR2013-00364, slip op. at 2–
`3 (PTAB Jun. 12, 2014) (Paper 30) (emphasis in original). We find that the
`evidence identified and described by ServiceNow as the subject of
`ServiceNow’s proposed motions is more properly considered supplemental
`evidence under 37 C.F.R. § 42.64(b)(2), because ServiceNow intends to use
`it to attempt to cure BMC’s authenticity and hearsay objections and support
`
`3
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`the admissibility of the underlying exhibits. Indeed, counsel for BMC
`indicated that BMC’s objections to these exhibits were limited to issues of
`admissibility. Moreover, counsel for ServiceNow did not articulate any
`bases beyond admissibility to justify its proposed motions to submit
`supplemental information. Accordingly, as stated during the call, we do not
`authorize ServiceNow to file motions to submit supplemental information
`under 37 C.F.R. § 42.123(a).
`Counsel for ServiceNow indicated that it did not intend to file any
`other motions at this time.
`
`
`
`BMC’s Proposed Motions
`C.
`BMC has indicated that it may file the following motions: (1) a
`
`motion to seal; (2) a motion for observations on cross-examination; (3) a
`motion for admission pro hac vice; and (4) a motion to seal. Case IPR2015-
`01176, Paper 13, 1–2; Case IPR2015-01211, Paper 14, 1–2. All of these
`motions are pre-authorized under our rules. Counsel for BMC indicated that
`it does not intend to file any other motions at this time.
`
`
`Accordingly, it is
`ORDERED that Petitioner’s requests for authorization to file motions
`to submit supplemental information are denied.
`
`
`4
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`Phillip E. Morton
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`
`PATENT OWNER:
`
`Robert Cote
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`Phillip Lee
`McKOOL SMITH, P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`plee@mckoolsmith.com
`
`5
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