`
`
`
`Paper 26
`Entered: March 28, 2014
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. and
` VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
`
`Cases CBM2013-00052 (Patent 7,904,326 B2)
`CBM2013-00053 (Patent 7,958,024 B2)
`CBM2013-00054 (Patent 7,908,304 B2) 1
`_______________
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and KEVIN F.
`TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`
`
`1 This order addresses an issue that is identical in all three cases. Therefore, we
`exercise discretion to issue one order to be filed in each of the three cases. The
`parties, however, are not authorized to use this style heading in subsequent papers
`since doing so may cause confusion.
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
` 37 C.F.R. § 42.5
`
`
`
`On March 27, 2014, the initial conference call2 was held involving counsel
`
`for the respective parties and Judges Blankenship, Medley and Turner.
`
`
`
`Patent Owner Motion to Amend
`
`Patent Owner intends to file a motion to amend in all three cases. Counsel
`
`for Patent Owner indicated that he was familiar with the requirements for a motion
`
`to amend. The Board directed attention to CBM2013-00017 and CBM2013-00018
`
`for further guidance regarding motions to amend. See, e.g., CBM2013-00017,
`
`Papers 19 and 24. The parties also are directed to the following orders and
`
`decisions: Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27
`
`(June 3, 2013) and Paper 68 (February 11, 2014); Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013) and Paper 66 (January
`
`7, 2014); and ZTE Corporation and ZTE (USA) Inc. v. Contentguard Holdings Inc.,
`
`IPR2013-00136, Paper 33 (November 7, 2013). Should either party have questions
`
`regarding a motion to amend, the party may initiate a conference call with opposing
`
`counsel and the Board to discuss.
`
`
`
`Supplemental Information for CBM2013-00053 and -00054
`
`
`
`Petitioner seeks authorization to file a motion to submit supplemental
`
`
`2 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`2
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`information pursuant to 37 C.F.R. § 42.223(c). Specifically, Petitioner seeks to
`
`submit challenges to dependent claims of U.S. Patent No. 7,958,024 in CBM2013-
`
`00053 and dependent claims of U.S. Patent No. 7,908,304 in CBM2013-00054;
`
`claims that are not involved in either case. A party seeking to submit supplemental
`
`information not relevant to a claim for which the trial has been instituted must show
`
`why the supplemental information reasonably could not have been obtained earlier,
`
`and that consideration of the supplemental information would be in the interests-of-
`
`justice. 37 C.F.R. § 42.223(c).
`
`Based on the facts presented, the Board has determined that considering the
`
`supplemental information in either CBM2013-00053 or CBM2013-00054 would
`
`not be in the interests-of-justice. As explained, considering such issues in either
`
`case would amount to having a trial within a trial. Specifically, a motion
`
`challenging multiple dependent claims, not involved in the trial would require
`
`briefing by the Petitioner, an opposition by the Patent Owner, and a reply by
`
`Petitioner. Moreover, there would need to be time to allow for cross-examination
`
`of any witness providing testimony as to the issues raised. All of this would impact
`
`the current schedule, and would not lead to a just, speedy, and inexpensive
`
`proceeding pursuant to 37 C.F.R. § 42.1(b). As further explained, Petitioner is not
`
`without recourse. Petitioner may file additional petitions raising the additional
`
`issues against additional claims. For all of these reasons, Petitioner is not
`
`authorized to file a motion to submit supplemental information.
`
`3
`
`
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`Schedule
`
`Petitioner requests authorization to file a motion to expedite times in all three
`
`cases. Patent Owner opposes. The Board considered the merits of the arguments
`
`during the conference call.
`
`Petitioner requests that the Board expedite Due Dates 1-7. Patent Owner
`
`requests that the Due Dates remain unchanged, as they already have been somewhat
`
`shortened, and Patent Owner needs the allotted time. The sole issue for each trial is
`
`whether claims of the respective patent are unpatentable under 35 U.S.C. § 101. As
`
`such, a schedule of due dates that focused on the sole issue was set by the Board.
`
`Based on the facts presented during the conference call, the Board was not
`
`persuaded to change the current schedule. Specifically, the Board has determined
`
`that in order to resolve the proceedings in a speedy, yet just manner, the current
`
`schedule for each proceeding strikes a balance between the competing interests of
`
`the parties. 37 C.F.R. § 42.1(b). The parties were reminded that they may stipulate
`
`different dates for Due Dates 1 through 3. The parties were encouraged to consider
`
`doing so. The Board would consider expediting Due Dates 4-7 if the parties agreed
`
`upon an expedited schedule for Due Dates 1-3. For all of the above reasons,
`
`It is
`
`ORDERED that Petitioner’s request to file a motion to submit supplemental
`
`information in CBM2013-00053 and CBM2013-00054 is denied; and
`
`FURTHER ORDERED that Petitioner’s request that the Board expedite Due
`
`Dates 1-7 in each proceeding is denied.
`
`
`
`
`
`4
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`
`PETITIONER:
`
`Deborah Fishman
`fishmand@dicksteinshapiro.com
`
`Jeffrey Miller
`millerj@dicksteinshapiro.com
`
`
`
`PATENT OWNER:
`
`Kent Chambers
`kchambers@tcchlaw.com
`
`Alisa Lipski
`alipski@azalaw.com
`
`David O’Brien
`david.obrien.ipr@haynesboone.com
`
`5
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`
`
`
`
`
`
`
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