UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
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`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 7,882,057 to Little et al.
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`Case No.: IPR2017-00151
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`
`
`______________
`
`
`
`REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`
`______________
`
`U.S. Patent No. 7,882,057 to Little et al.
`
`Case No.: IPR2017-00151
`
`
`
`______________
`
`
`
`REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`Cases IPR2017-00151
`Patent No.: 7,882,057
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`Atty. Dkt. No.: FPGP0129IPR3
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`Table of Contents
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`
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`
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`Table of Authorities .................................................................................................. ii
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`I.
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`Introduction ...................................................................................................... 1
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`A.
`B.
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`Issues ..................................................................................................... 1
`Summary of Basis for Reconsideration ................................................. 1
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`II.
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`Undisputed Facts ............................................................................................. 3
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`III. Argument ......................................................................................................... 4
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`A.
`
`B.
`
`Binding precedent requires that the Board treat the Versata
`action as having never been filed .......................................................... 4
`1.
`The Board was required by precedent to accept that the
`effect of the Texas court’s dismissal without prejudice
`left “the parties as if the action had never been brought” ........... 5
`The Texas court’s dismissal was not akin to consolidation ................10
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`IV. Conclusion .....................................................................................................15
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`Certificate of Service ...............................................................................................17
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`
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`
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`i
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`Atty. Dkt. No.: FPGP0129IPR3
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`Table of Authorities
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`Cases
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`Cases IPR2017-00151
`Patent No.: 7,882,057
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`
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`Advanced Auctions LLC v. eBay Inc.,
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`Civil Action No. 13-cv-00360 (May 15, 2013) .............................................12
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`Apple, Inc. v. Rensselaer Poly. Inst. & Dynamic Advances, LLC,
`
`IPR2014-00319, slip op. at 3 (PTAB June 12, 2014) ....................................12
`
`Atlanta Gas Light v. Bennet Regulator Guards, Inc,
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`IPR2015-00826, slip op. at 14 (PTAB Sept. 1, 2015) ............................... 7-10
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`Bonneville Assoc., Ltd. P’ship v. Baram,
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`165 F.3d 1360 (Fed. Cir. 1999) ...................................................................1, 9
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`Burger v. Am. Mar. Offs. Union,
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`170 F.3d 184 (5th Cir. 1999) .........................................................................14
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`eBay, Inc. v. Advanced Auctions, LLC,
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`IPR2014-00806, slip op. at 3 (PTAB Sept. 25, 2014) ...................................12
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`Futurewei Tech., Inc. v. Acacia Res. Corp.,
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`737 F.3d 704 (Fed. Cir. 2013) .......................................................................14
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`Gordon Howard Assocs., Inc. v. LunarEye, Inc.,
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`Case IPR2014-01213, slip op. at 12 (PTAB Feb. 3, 2015) (Paper 11) ........... 9
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`Graves v. Principi,
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`294 F.3d 1350 (Fed. Cir. 2002) ..................................................... 1, 5, 6, 9-11
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`Hamilton Beach Brands, Inc. v. f’real Foods, LLC,
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`Case No. IPR2016-01105 (PTAB Nov. 30, 2016) ................................. 13, 14
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`Histologics, LLC v. CDX Diagnostics, Inc.,
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`IPR2014-00779, slip op. at 4-5 (PTAB Sept. 12, 2014) ...............................11
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`InVue Sec. Prods., Inc. v. Merch. Techs., Inc.,
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`Case IPR2013-00122, 2013 WL 5947707 (PTAB June 27, 2013) ................. 9
`
`ii
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`Cases IPR2017-00151
`Patent No.: 7,882,057
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`Oracle Corp. v. Click-To-Call Tech’s LP,
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`IPR2013-00312, slip op. at 17 (Oct. 30, 2013) ............................. 2, 4-6, 9, 10
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`Other Authorities
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`Federal Prac. & Proc. Civ. § 2367 (3d. ed.) ............................................................. 7
`
`Rules
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`35 U.S.C. § 315 ........................................................................... 1, 3, 4, 7, 10, 13, 14
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`37 C.F.R. § 42.71 ....................................................................................................... 1
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`iii
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`Cases IPR2017-00151
`Patent No.: 7,882,057
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`Introduction
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`
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`I.
`
`Pursuant to 37 C.F.R. § 42.71(d), Ford Motor Company (“Ford”) respectfully
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`requests a rehearing of the United States Patent Trial and Appeal Board (“Board”)
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`decisions denying Ford’s petition for inter partes review (“IPR”) of U.S. Patent No.
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`7,882,057 (the ‘057 Patent). (IPR2017-00151, Paper 7.)
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`A.
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`Issues
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`(1) Whether the Board misapplied the binding Federal Circuit and PTAB
`
`precedent by refusing to hold that the dismissal without prejudice of the Versata
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`action has no legal effect under 35 U.S.C. § 315(b) and must be treated as if the
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`action had never been filed.
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`(2) Whether the Board misapplied the law in holding that there is a
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`“continuous chain of assertion” exception to the precedential rule that a complaint
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`dismissed without prejudice has no legal effect under 35 U.S.C. § 315(b).
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`B.
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`Summary of Basis for Reconsideration
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`Petitioner submits that the Board misapplied binding precedent to the
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`undisputed facts. The Federal Circuit has held that the effect of a dismissal without
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`prejudice is that it leaves the parties as if the underlying complaint had never been
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`filed. Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assoc.,
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`Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999). The PTAB has
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`recognized, quoted, and adopted this law as precedent, reiterating that the effect of
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`1
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`a dismissal without prejudice is to leave the parties as if the case had never been
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`filed. Oracle Corp. v. Click-To-Call Tech’s LP, IPR2013-00312, slip op. at 17 (Oct.
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`30, 2013) (Paper 26) (“The Federal Circuit consistently has interpreted the effect of
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`such dismissals [without prejudice] as leaving the parties as though the action had
`
`never been brought.”) (precedential as to quoted section) (citations omitted).1
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`But in this proceeding, the Board has flipped the analysis. It has turned the
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`effect of a dismissal without prejudice into a test for determining whether to treat the
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`dismissal as one without prejudice. However, binding precedent from the Federal
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`Circuit and the PTAB requires the Board give effect to the Texas court’s dismissal
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`without prejudice by treating it as though the Versata action had never been brought.
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`Instead, the Board incorrectly held that Ford failed to show that the dismissal had
`
`left the parties as though the Versata action had never been brought.
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`A dismissed-without-prejudice complaint is treated as if it had never been
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`brought as a matter of law, not from the several factors considered by the Board. An
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`exception arises in cases consolidated under Rule 42 because the defendant remains
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`answerable to the original complaint – a circumstance that does not apply here. The
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`authority for the precedential Oracle rule arises from the law that a dismissed-
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`without-prejudice complaint has no legal effect at all, and therefore no legal effect
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`1 Throughout this document, all emphasis is added unless otherwise noted.
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`2
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`under § 315(b). Because Patent Owner’s dismissed-without-prejudice complaint had
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`no legal effect after its dismissal, the Board should have reached the merits of Ford’s
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`IPR petition.
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`II. Undisputed Facts
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`On February 19, 2015, Ford filed a declaratory judgment action (“the Ford
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`action”) against Versata in the Eastern District of Michigan. (Ex. 1224 at 1-2, “the
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`Michigan case.”) On May 7, 2015, Versata filed a separate action (“the Versata
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`action”) against Ford in the Eastern District of Texas alleging infringement the ’057
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`Patent. (Ex. 1223 at 22, “the Texas case.”)
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`Ford moved to dismiss Versata’s retaliatory Texas complaint for violation of
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`the first-to-file rule, and Versata moved to dismiss the Ford action. On October 14,
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`2015, the Michigan court ruled against Versata and exercised jurisdiction over the
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`Ford action under the Federal Circuit’s first-to-file rule. (Ex. 1224 at 6-17.) Four
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`days later, Versata filed a counterclaim in the Ford action asserting infringement of
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`the ‘057 Patent. (Ex. 1222 at 44-45.)
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`On November 5, 2015, in an order recognizing the Michigan court’s first-to-
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`file jurisdiction, the Texas court declined to exercise jurisdiction and ordered the
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`parties to provide “any good faith reasons” that the Versata action should not be
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`dismissed. (Ex. 1225.) In response to that order, Versata agreed to dismissal:
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`“Versata is not opposed to dismissal of [the Versata] action without prejudice.” (Ex.
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`3
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`1226.) Three days later, the Texas court dismissed the Versata action “without
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`prejudice to [Versata’s] ability to assert its claims in the Michigan court.” (Ex.
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`1227.) Versata neither opposed nor appealed that dismissal.
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`On October 28, 2016, one year after Versata’s only valid claim asserting
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`infringement of the ‘057 Patent (i.e., its counterclaim in the Ford action), Ford filed
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`its petitions for IPR of the ‘057 Patent. (IPR2017-00150 and IPR2017-00151.)
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`III. Argument
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`A. Binding precedent requires that the Board treat the Versata
`action as having never been filed
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`In its Petition, Ford argued that, because the Texas court’s dismissal was
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`without prejudice, the PTAB’s precedential Oracle decision necessitates that
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`Versata’s Texas complaint be treated as if it had never been filed. (Pet. at 2-3.) The
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`Board rejected Ford’s argument, concluding that “the dismissal without prejudice
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`was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most importantly, did not
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`leave the parties as though the action had never been brought.” (Paper 7 at 7.)
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`Relying on Apple II and similar cases, the Board took Versata’s lead to find that the
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`dismissal was more akin to consolidation of two cases under Rule 42. (See id. at 13,
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`“[W]e agree that the relevant factor in determining whether the earlier complaint in
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`the Versata action is operative for purposes of § 315(b) is the continuous assertion
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`of the patent against Ford, not whether the case was formally consolidated.”)
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`Ford submits that the Board’s determination was erroneous on both points.
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`As explained below: (1) under binding precedent, when actions, such as the Versata
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`action, are dismissed without prejudice, “the effect of such dismissals [is] as leaving
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`the parties as though the action had never been brought,” and (2) the facts here are
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`not analogous to cases involving a Rule 42 consolidation because “continuity” is not
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`the proper legal test and there was, in fact, no continuity between the Texas and
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`Michigan cases.
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`1.
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`The Board was required by precedent to accept that
`the effect of the Texas court’s dismissal without
`prejudice left “the parties as if the action had never
`been brought”
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`In the relevant precedential cases, the Federal Circuit and the PTAB have
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`explained that a dismissal without prejudice has the effect of leaving the parties in
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`the same position as if the action had never been brought. Graves, 294 F.3d at 1356;
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`Oracle, IPR2013-00312, slip op. at 17. Importantly, it is irrelevant why a court
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`dismissed the action if it was dismissed without prejudice.
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`In Graves, a veteran appealed an adverse board decision to the Veteran’s
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`Court. Graves, 294 F.3d at 1353. His counsel then asked the Veteran’s Court to
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`dismiss the appeal without prejudice and returned to the board, seeking
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`reconsideration. Id. After failing to convince the board to reconsider his case,
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`Graves again appealed to the Veteran’s Court. The Federal Circuit held that the
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`appeal was time-barred. Id. at 1356-57. As relevant here, the Federal Circuit
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`explained:
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`A dismissal without prejudice is a dismissal that occurs without an
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`adjudication on the merits. The dismissal of an action without
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`prejudice leaves the parties as though the action had never been
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`brought.
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`Id. (citations omitted).
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`Graves establishes two basic tenets: (1) a dismissal without prejudice “is a
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`dismissal that occurs without an adjudication on the merits” and (2) the effect of
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`such a dismissal is that it “leaves the parties as though the action had never been
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`brought.” Id.
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`The PTAB adopted these tenets in Oracle. There, the exclusive licensee of
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`the Patent Owner sued the Petitioner for patent infringement. Oracle, IPR2013-
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`00312, slip op. at 15. Two years later, after the licensee was acquired by a new
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`owner, the parties jointly stipulated to dismissal of the lawsuit without prejudice. Id.
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`at 15-16. Nine years later the Patent Owner sued the Petitioner for infringement of
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`the same patent. Id. at 15. The Board considered the relevant authorities and held,
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`“[t]he Federal Circuit consistently has interpreted the effect of such dismissals as
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`leaving the parties as though the action had never been brought.” Id. at 17. In
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`addition to citing Federal Circuit cases, the Board also quoted 9 Wright, Miller,
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`Kane, and Marcus, Federal Prac. & Proc. Civ. § 2367 (3d. ed.): “[A]s numerous
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`federal courts have made clear, a voluntary dismissal without prejudice under Rule
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`41(a) leaves the situation as if the action never had been filed.”
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`As these precedents make clear, the phrase “leaving the parties as though the
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`action had never been brought” is a statement, not a question. It is the effect of a
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`dismissal without prejudice, not a threshold inquiry.
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`In Atlanta Gas Light, the PTAB criticized the Patent Owner for “turn[ing] the
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`Federal Circuit’s statement about the effect of a dismissal without prejudice on its
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`head by attempting to elevate it to a threshold requirement.” Atlanta Gas Light v.
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`Bennet Regulator Guards, Inc, IPR2015-00826, slip op. at 14 (PTAB Sept. 1, 2015)
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`(Paper 12) (emphasis in original). Respectfully, the Board has made the same error
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`in the present case.
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`In Atlanta Gas Light, the Board began its analysis by explaining that “[w]hen
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`considering the statutory bar under § 315(b), the Board has consistently held that
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`dismissal without prejudice of a party from district court litigation nullifies the effect
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`of service on that party of the underlying complaint.” Id. at 12 (numerous citations
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`omitted). The Board noted that the phrase “leaving the parties as though the action
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`had never been brought” means the parties are left to pursue the available courses
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`of action:
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`The Federal Circuit has characterized the effect of dismissals without
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`prejudice as “leaving the parties as though the action had never been
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`brought.” [Citations omitted.] This is, of course, a legal fiction—the
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`initiation of even procedurally defective proceedings have certain
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`effects, and the Federal Circuit's statement is understood properly as
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`referring to the restored ability of parties to pursue courses of action
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`available to them before the action had been brought.
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`Id. at 13. It is undisputed that the Versata action was dismissed without an
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`adjudication on the merits. The Texas court declined jurisdiction over the Versata
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`action under the Federal Circuit’s first-to-file rule. (Ex. 1227.) As a result, Versata’s
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`Texas complaint went unanswered and had no substantive legal effect on the parties.
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`After the dismissal, Versata was free to pursue the same courses of action available
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`to it as before, namely, it could file counterclaims against Ford in the first-filed
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`Michigan case. As Atlanta Gas Light makes clear, precedent requires that the
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`Versata action must be treated as if it had never been filed, which is the effect of a
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`dismissal without prejudice.
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`When the Board turned the Federal Circuit’s dismissal effect into a question,
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`it arrived at the wrong answer. The Board held that Versata was not left in the same
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`position after the dismissal because Versata could not re-file its complaint in Texas:
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`“there is no evidence suggesting that the parties could have refiled the action in the
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`Texas court as if the Versata action had never occurred.” (Paper 7 at 10.) But that
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`is not a relevant factor, as other IPR decisions confirm. See, e.g., Atlanta Gas Light,
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`IPR2015-00826, slip op. at 13-14 (Paper 12) (complaint dismissed for lack of
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`personal jurisdiction could not be refiled in Ohio court); InVue Sec. Prods., Inc. v.
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`Merch. Techs., Inc., Case IPR2013-00122, 2013 WL 5947707, at *4–5 (PTAB June
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`27, 2013) (Paper 17) (complaint dismissed for lack of subject matter jurisdiction
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`could not be refiled in North Carolina court); Gordon Howard Assocs., Inc. v.
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`LunarEye, Inc., Case IPR2014-01213, slip op. at 12 (PTAB Feb. 3, 2015) (Paper 11)
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`(complaint dismissed for lack of personal jurisdiction could not be refiled in Texas
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`court).
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`The Board also erred when it distinguished Oracle, Bonneville, and Graves
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`because the dismissal of the Versata action “was not pursuant to Rule 41(a)” and
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`“was not ‘voluntary.’” (Paper 7 at 7.) In Graves, the dismissal was of an appeal and
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`not a dismissal under Fed. R. Civ. P. 41(a). Graves, 294 F.3d at 1353. In Atlanta
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`Gas Light, the dismissal was involuntary based on the Patent Owner’s lack of
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`personal jurisdiction. Atlanta Gas Light, IPR2015-00826, slip op. at 12-14; see also
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`InVue, IPR2013-00122, 2013 WL 5947707, at *4–5 (involuntary dismissal), Gordon
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`Howard, IPR2014-01213, slip op. at 12 (involuntary dismissal). These cases show
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`that the effect of a dismissal without prejudice does not depend on Rule 41(a) or the
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`“voluntariness” of the dismissal.
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`The Board also distinguished some cases Ford cited noting that they were
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`decided under § 315(a) rather than § 315(b). (Paper 7 at 9.) The Board did not
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`explain why that distinction matters. Both subsections of § 315 use, and their
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`analysis pertains to, the same language (i.e., when an action is deemed “filed”) and
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`the same legislative history. The other textual differences are not relevant to the
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`issue at hand, namely, treating an action dismissed without prejudice as if it had
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`never been filed, as confirmed by Oracle and Atlanta Gas Light, both of which were
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`decided under § 315(b).
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`Had the Board applied Federal Circuit and PTAB precedent, it would have
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`concluded that because it was dismissed without prejudice, the Versata action should
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`be treated as if it had never been filed for purposes of § 315(b).
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`B.
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`The Texas court’s dismissal was not akin to consolidation
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`The Board analogized the complaints in the Versata and Ford actions to
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`consolidation cases, where the PTAB has held Oracle does not apply. (Paper 7 at
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`13, “the relevant factor in determining whether the earlier complaint in the Versata
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`action is operative for purposes of § 315(b) is the continuous assertion of the patent
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`against Ford, not whether the case was formally consolidated.”) But the “continuity”
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`concept the Board used in the present IPR is not the proper touchstone. First, as
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`Graves and Oracle confirm, the proper focus is on the “action,” not specific patents
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`within the action—it is the “action” that is treated as if it had never been filed. In
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`Graves, for example, Graves was continuously asserting his rights at the board and
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`Veteran’s Court levels. Graves, 294 F.3d at 1353. Nevertheless, the Federal Circuit
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`held that the dismissal of Graves’ appeal was treated as if the “action” had never
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`been brought. Id. at 1356-57. In contrast, the Board in the instant IPR looked not at
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`the Versata action, but incorrectly at a specific infringement allegation in that action,
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`and asserted that the allegation (not the action) was asserted continuously. The
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`Board did not address the undisputed fact that the Versata action did not continue in
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`Michigan. Versata asserted 16 patents in the Versata action, but only 8 patents in
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`Michigan. (Exs. 1223 and 1222.) Also, the Versata parties in the Texas action are
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`different than the Versata parties in the Michigan action. (Id.)
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`Second, the three 2014 IPR decisions, which the Board cited to support its
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`analogy, are readily distinguishable. (Paper No. 7 at 11-12.) In each instance, an
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`action was consolidated such that the alleged infringer remained answerable to the
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`original complaint.
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`In Histologics, LLC v. CDX Diagnostics, Inc., IPR2014-00779, slip op. at 4-
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`5 (PTAB Sept. 12, 2014) (Paper 6), the original action was transferred and
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`consolidated with the subsequent action. The Board explained that “the action was
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`not dismissed but, rather, consolidated” and that the alleged infringer “remain[ed]
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`answerable to the U.S. District Court for the Central District of California for the
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`allegations made in the complaint.” Id. In the present case, however, the Versata
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`action was not transferred to Michigan or consolidated with the Ford action, and
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`Ford never answered Versata’s Texas complaint – in Texas or in Michigan.
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`In Apple, Inc. v. Rensselaer Poly. Inst. & Dynamic Advances, LLC, IPR2014-
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`00319, slip op. at 3 (PTAB June 12, 2014) (Paper 12), Apple answered the original
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`complaint, and the original action was later consolidated with a subsequent action
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`under Rule 42 by stipulation of the parties. The Board noted that the court’s order
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`“specifically bound the parties to positions taken” in the original case. Id. at 7. The
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`Board distinguished cases involving “a complaint dismissed without prejudice and
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`without consolidation.” Id. In contrast to Apple, Ford did not answer Versata’s
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`Texas complaint, and the Versata action was not consolidated with the Ford action.
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`In eBay, Inc. v. Advanced Auctions, LLC, IPR2014-00806, slip op. at 3 (PTAB
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`Sept. 25, 2014) (Paper 14), eBay answered the complaint in the first action.2
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`Following the filing of the second action, the parties filed a joint motion requesting
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`that only the second action proceed, and that “the work from the First Action should
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`2 The Board’s opinion in eBay states that the Rule 16 scheduling conference and the
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`Rule 26(f) conference had already occurred in the first action. Id. at 3. These
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`statements confirm that eBay answered the complaint in the first action. See
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`Advanced Auctions LLC v. eBay Inc., Civil Action No. 13-cv-00360, Docket No. 19
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`(Answer, Defenses, and Counterclaims) (May 15, 2013).
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`carry over the Second Action.” Id. In the present case, Ford did not answer
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`Versata’s Texas complaint, Ford did not file a motion to consolidate, and the
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`Michigan and Texas actions were never consolidated.
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`The Versata and Ford actions cannot be viewed like consolidated actions.
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`Ford did not remain answerable in the Versata action. This was not a scenario where
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`Versata’s pending claims in Texas were transferred to Michigan, or consolidated
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`with the Michigan action. The dismissed complaint had no legal effect, and thus
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`operated as if it had never existed.
`
`Hamilton Beach Brands, Inc. v. f’real Foods, LLC, Case No. IPR2016-01105
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`(PTAB Nov. 30, 2016) (Paper 10) confirms that continuous assertion of a patent
`
`does not change the effect of a dismissal without prejudice. f’real Foods filed a
`
`complaint in 2014 for infringement of the ‘658 patent. Id. at 8. The case continued
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`for two years before it was discovered that f’real Foods had not owned the patent
`
`when it filed the 2014 complaint. Id. f’real Foods filed a second complaint for
`
`infringement of the ‘658 patent on January 26, 2016. It dismissed without prejudice
`
`the 2014 complaint on February 26, 2016. Id. Thus, f’real Foods continuously had
`
`asserted infringement of the ‘658 patent by the Petitioner since the filing of the 2014
`
`complaint, and the district court consolidated the 2014 and the 2016 cases “for all
`
`purposes.” Id. Nonetheless, the Board held that the correct date for applying
`
`§ 315(b) was the filing of the 2016 complaint. Id. at 12.
`
`13
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`
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`Atty. Dkt. No.: FPGP0129IPR3
`
`Cases IPR2017-00151
`Patent No.: 7,882,057
`
`
`
`The Board explained, “the allegation of infringement of the ’658 patent in the
`
`2014 Complaint was not a proper federal pleading and did not trigger the one-year
`
`time period under 35 U.S.C. § 315 (b).” Id. at 10. Likewise, Versata’s complaint in
`
`the Texas case was not a proper federal pleading under the well-established first-to-
`
`file rule. Futurewei Tech., Inc. v. Acacia Res. Corp., 737 F.3d 704, 707 (Fed. Cir.
`
`2013) (“[T]he first-to-file rule . . . ‘permits a district court to decline jurisdiction
`
`when a complaint involving substantially similar parties and issues has already been
`
`filed in another district court.’”); Burger v. Am. Mar. Offs. Union, 170 F.3d 184 at
`
`*2 (5th Cir. 1999) (unreported) (“It was therefore within the district court’s broad
`
`discretion to decline jurisdiction over Burger’s claims, and to defer to the first-filed
`
`court in order to avoid unnecessary litigation and the risk of an inconsistent result.”).
`
`When considering § 315(b), the Patent Owner’s defective complaint (for lack
`
`of standing) in Hamilton Beach and Versata’s defective complaint (for lack of
`
`jurisdiction under the first-to-file rule) are indistinguishable. As in Hamilton Beach,
`
`Versata’s patent claims in Texas “were jurisdictionally defective, and the defect
`
`could not be cured after the filing date of the complaint.” Hamilton Beach, slip op.
`
`at 9. But unlike in Hamilton Beach, no substantive activity of any kind occurred in
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`the Versata action, meaning the Hamilton Beach case involved actions significantly
`
`more “continuous” than those in the Texas and Michigan cases. The Hamilton
`
`14
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`Atty. Dkt. No.: FPGP0129IPR3
`
`Cases IPR2017-00151
`Patent No.: 7,882,057
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`
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`Beach decision confirms that “continuity” is not a proper basis for refusing to treat
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`the Versata action as if it had never been filed.
`
`As added support for its “continuity” analysis, the Board quoted two excerpts
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`from a 2016 hearing transcript in the Ford action cited by Patent Owner. (Paper 7
`
`at 8, 13.) Those excerpts were not from the Michigan court’s September 22, 2015
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`hearing on whether it would retain jurisdiction over the Ford action. (Ex. 1224, p.
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`6.) The excerpts were from a much-later August 2016 hearing where the Michigan
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`court was considering a motion to stay the Ford action after Ford filed its IPR
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`petitions. (Ex. 2311, p. 1.) The excerpts from the August 2016 hearing are out of
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`context and irrelevant to the issue of whether the Ford action was a consolidation of
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`the Versata action, which had been dismissed in 2015.
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`IV. Conclusion
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`Federal Circuit and PTAB precedent require that the Board treat an action
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`dismissed without prejudice as if it had never been filed. The Board misapplied this
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`precedent when it declined to institute the present IPR. Ford asks the Board to
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`reconsider its denial, and institute trial on the ’057 patent.
`
`Dated: May 31, 2017
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`
`
`
`
`Respectfully submitted,
`
`
` /John S. LeRoy/
`John S. LeRoy (Reg. No. 48,158)
`Christopher C. Smith (Reg. No. 59,669)
`Thomas A. Lewry (Reg. No. 30,770)
`Frank A. Angileri (Reg. No. 36,733)
`
`15
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`
`
`Cases IPR2017-00151
`Patent No.: 7,882,057
`
`Atty. Dkt. No.: FPGP0129IPR3
`
`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
`
`
`
`
`
`
`
`
`16
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`
`
`Atty. Dkt. No.: FPGP0129IPR3
`
`Cases IPR2017-00151
`Patent No.: 7,882,057
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that the foregoing REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(d), was served in its entirety on May
`31, 2017, upon the following parties by electronic mail at PTAB@skgf.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
`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
`
`
`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,
`
`
` /John S. LeRoy/
`John S. LeRoy (Reg. No. 48,158)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Attorneys for Petitioner
`
`
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`17
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