Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 14
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` Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY and JAMES B. ARPIN, Administrative Patent
`Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Tel: 571-272-7822
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`
`
`
` Paper 14
`
` Entered: May 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY and JAMES B. ARPIN, Administrative Patent
`Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`CBM2016-00100
`Patent 8,805,825 B1
`
`
`On May 1, 2017, a conference call was held involving counsel for the
`
`parties and Judges Medley and Arpin. Patent Owner requested the
`
`conference call to discuss the late filing of Petitioner’s Rehearing Request
`
`(Paper 13). Patent Owner requests that the Board expunge the Rehearing
`
`Request as untimely. Alternatively, Patent Owner seeks authorization to file
`
`an opposition to the Rehearing Request. Petitioner opposes expungement,
`
`but does not oppose the filing of a Patent Owner opposition, limited to
`
`addressing Petitioner’s arguments made with respect to the Federal Circuit’s
`
`recent decision in Rembrandt Wireless Technologies, LP v. Samsung
`
`Electronics Co., Case No. 2016-1729 (Fed. Cir. Apr. 17, 2017).
`
`Late Filing of Petitioner’s Rehearing Request
`
`
`
`According to Petitioner, Petitioner served through email its Rehearing
`
`Request on the day it was due, April 19, 2017, and also attempted to upload
`
`the request the same day in PTAB E2E. Although Petitioner did not
`
`independently verify that the paper had been uploaded successfully into the
`
`PTAB E2E system, Petitioner received an email receipt suggesting that the
`
`paper had been filed. On April 20, 2017, Board personnel notified Petitioner
`
`that, although it appeared that an attempt was made to file a rehearing
`
`request, no rehearing request was uploaded into the PTAB E2E system.
`
`Board personnel instructed Petitioner to refile its Rehearing Request, and, on
`
`that same day, Petitioner successfully uploaded the Rehearing Request.
`
`Counsel for Patent Owner argued that Petitioner failed to follow the
`
`proper procedure and that the Board’s rules matter, including timely filing of
`
`papers. A late action will be excused on a showing of good cause or upon a
`
`Board decision that consideration on the merits would be in the interests of
`
`justice. 37 C.F.R. § 42.5(c)(3). As we discussed during the call, based on
`
`
`
`CBM2016-00100
`Patent 8,805,825 B1
`
`the record before us and the presentations made, the one day late filing is
`
`excused. In particular, Board personnel already acknowledged the excusable
`
`nature of this delay when it notified Petitioner that no paper had been
`
`uploaded and instructed Petitioner to refile. In any event, we disagree with
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`Patent Owner that it is prejudiced by the one day late filing because Patent
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`Owner was served the Rehearing Request on the day it was due. While
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`parties should independently verify that papers are uploaded successfully to
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`PTAB E2E – especially when filings are made on the deadline date, here it
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`was not unreasonable for Petitioner to believe the paper had been uploaded
`
`successfully due to the email notification it received suggesting that the
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`paper had been uploaded. Accordingly, we excuse the one day late filing
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`and deny Patent Owner’s request to expunge the paper.
`
`Further Briefing in the Proceeding
`
`As noted above, Patent Owner alternatively seeks authorization to file
`
`an opposition to Petitioner’s Rehearing Request. Petitioner does not oppose
`
`the filing of such an opposition, as long as the arguments are limited to
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`addressing the recent Rembrandt Wireless Federal Circuit decision. Upon
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`consideration of the record before us, we grant Patent Owner’s request to file
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`an opposition limited to addressing arguments made with respect to
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`Rembrandt Wireless. Petitioner is authorized to file a reply, limited to the
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`arguments made in the opposition.
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`Order
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s request for us to expunge Petitioner’s
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`Rehearing Request is denied;
`
`
`
`CBM2016-00100
`Patent 8,805,825 B1
`
`
`FURTHER ORDERED that Patent Owner’s request to file an
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`opposition to the Rehearing Request is granted for the limited purpose of
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`addressing arguments made with respect to Rembrandt Wireless;
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`FURTHER ORDERED that Patent Owner’s opposition is limited to
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`four pages and is due no later than May 9, 2017; and
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`FURTHER ORDERED that Petitioner is authorized to file a reply,
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`limited to two pages due no later than May 16, 2017, limited to addressing
`
`arguments made in the opposition.
`
`
`
`CBM2016-00100
`Patent 8,805,825 B1
`
`PETITIONER:
`
`Christopher C. Smith
`Thomas A. Lewry
`John S. LeRoy
`Frank A. Angileri
`John P. Rondini
`Jonathan D. Nikkila
`BROOKS KUSHMAN P.C.
`csmith@brookskushman.com
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`jrondini@brookskushman.com
`jnikkila@brookskushman.com
`fangileri@brookskushman.com
`
`
`
`PATENT OWNER:
`
`Robert Greene Sterne
`Salvador M. Bezos
`Michelle K. Holoubek
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jmutsche-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`Kent B. Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, L.L.P.
`kehambers@tcchlaw.com
`
`Sharoon Saleem
`JONES & SPROSS, P.L.L.C.
`sharoon.saleem@jonesspross.com
`
`
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