Trials@uspto.gov
`571–272–7822
`
`Paper 14
`Entered: March 7, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`CONFIGIT A/S,
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`IPR2021-01055
`Patent 6,836,766 B1
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`DEBRA K. STEPHENS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571–272–7822
`
`Paper 14
`Entered: March 7, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`CONFIGIT A/S,
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`IPR2021-01055
`Patent 6,836,766 B1
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`DEBRA K. STEPHENS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`On March 4, 2022, a conference call was held involving counsel for
`the respective parties and Judges Turner, Medley, and Stephens. The
`purpose of the conference call was to discuss (1) the nature of a protective
`order to be agreed to by the parties, (2) a motion to seal, and (3) Petitioner’s
`opposed request to file a motion to submit supplemental information
`pursuant to 37 C.F.R. § 42.123(b).
`On December 22, 2021, we instituted inter partes review of claims 1–
`5 and 9–19 of U.S. Patent No. 6,836,766 B1 (Ex. 1001; “the ’766 Patent”).
`Paper 11. Patent Owner’s Preliminary Response addressed the issue of
`whether Oracle11 and Oracle22 were prior art to the ’766 Patent. Paper 6,
`16–24. The parties further addressed the issue through additional briefing.
`Papers 9, 10. We determined, in the Institution Decision, that Petitioner had
`sufficiently shown that those references were publicly available prior to the
`’766 Patent’s priority date of January 31, 2001 for purposes of institution,
`and we set a date of publication or public accessibility for each reference,
`indicating that “[b]oth parties will be able to submit evidence and/or
`arguments to alter those dates set or seek to antedate or exclude evidence
`during the course of the trial.” Paper 11, 13, 15–17.
`Petitioner requested the conference call seeking guidance on filing a
`protective order and a motion to seal. Based on the proceedings in a district
`court, Petitioner obtained a declaration from non-party Oracle (“the new
`declaration”) regarding the public availability of Oracle1 and Oracle2.
`Petitioner asserts that Oracle has designated the new declaration as
`
`
`1 Oracle® Configurator Developer, User’s Guide, Release 11i for
`Windows 95/98 and Windows NT 4.0, April 2000 (Ex. 1003, “Oracle1”).
`2 Oracle® Configurator, Oracle Configuration Interface Object (CIO)
`Developer’s Guide, Release 11i, March 2000 (Ex. 1004, “Oracle2”).
`2
`
`
`
`
`
`“confidential,” and seeks to serve Patent Owner with a copy. On the
`conference call, Patent Owner’s counsel indicated that Patent Owner would
`be amenable to receipt of the new declaration, and both parties have agreed
`to use the Board’s Default Protective Order and be bound thereby.
`We indicated on the conference call that the panel had no objection to
`the parties using the Board’s Default Protective Order in connection with
`service of the new declaration. This Order memorializes the intent of the
`parties. Until any document is filed in this proceeding under that Protective
`Order, there is no need for a motion to seal to be filed. Additionally, so long
`as both parties are bound by the Default Protective Order, there is no need
`for the Default Protective Order to be made of record in this proceeding. If
`either party seeks to make the new declaration of record, its submission
`should be accompanied by a motion to seal, indicating the Default Protective
`Order.
`Petitioner also sought guidance regarding the appropriate mechanism
`for entering this new declaration into the record should Patent Owner re-
`raise the issue of prior art public availability in its Patent Owner Response.
`Petitioner requests the late submission of supplemental information, i.e., the
`new declaration, indicating that the information could not have been
`obtained earlier and that the consideration of that information would be in
`the interests-of-justice, pursuant to 37 C.F.R. § 42.123(b). Petitioner
`maintains that in case Patent Owner includes substantive arguments in its
`Patent Owner Response regarding the public availability of Oracle1 or
`Oracle2, Petitioner would like to file the new declaration now.
`Patent Owner opposes the request, arguing that the supplemental
`evidence should have been filed with the Petition and would act as an
`untimely supplementation of the Petition. Patent Owner also indicated that
`
`3
`
`
`
`
`
`Petitioner had not identified any Rule under which such a submission would
`be proper. On the conference call, Patent Owner’s counsel indicated that the
`issues to be raised in the Patent Owner Response, including the issue of the
`public availability of Oracle1 and Oracle2, had not yet been determined. We
`note that there has not been any evidentiary objection to Oracle1 or Oracle2
`by Patent Owner under 37 C.F.R. § 42.64(b)(1), which would have needed
`to be made within ten (10) business days of the institution of trial.
`Based on the facts of this case, we determine that Petitioner will have
`opportunity to respond to Patent Owner’s Response in its Petitioner Reply
`and may file evidence in support of such arguments. Petitioner may also file
`the supplemental evidence to the extent necessary if Patent Owner files a
`motion to exclude. Based on the facts before us, Petitioner may introduce
`the new declaration in the ordinary course of the proceedings without filing
`a separate motion to submit supplemental information and all that that
`entails (a Patent Owner opposition to the motion and a Petitioner reply to the
`motion). See 37 C.F.R. § 42.1(b). See also Hulu, LLC v. Sound View
`Innovations, LLC, IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential)
`(detailing that additional evidence may be admitted so long as that evidence
`is responsive to the prior briefing).
`We disagree with Patent Owner that the filing of such evidence in
`connection with Petitioner’s Reply to Patent Owner’s Response or to any
`Opposition to a Patent Owner Motion to Exclude would be prejudicial to
`Patent Owner, or act as an untimely supplementation of the Petition. Patent
`Owner will have the new declaration prior to the due date for its Patent
`Owner Response, and may cross-examine the declarant(s) prior to filing its
`Patent Owner Response. If additional time is needed for a deposition prior
`to the filing of the Patent Owner Response, Patent Owner may request an
`
`4
`
`
`
`
`
`extension of time to accomplish such a deposition. Patent Owner may also
`file the new declaration in this proceeding, assuming it does so under a
`motion to seal, if Patent Owner wishes to refer to the new declaration in its
`Patent Owner Response.
`Patent Owner, therefore, will have many opportunities to address the
`veracity of the testimony of the new declaration and will be provided due
`process. See Hamilton Beach Brands, Inc. v. F’real Foods, LLC, 908 F.3d
`1328, 1339 (Fed. Cir. 2018) (distinguishing SAS because the party asserting
`the APA violation “had notice of the contested claim construction issues and
`an opportunity to be heard”).
`It is
`ORDERED that Petitioner’s request to file a motion to submit
`supplemental information is dismissed as moot.
`
`
`
`5
`
`
`
`
`
`For PETITIONER:
`David M. Hoffman
`Jeffrey A. Shneidman
`Kenneth W. Darby Jr.
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`shneidman@fr.com
`kdarby@fr.com
`
`
`For PATENT OWNER:
`Robert G. Sterne
`James R. Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-ptab@sternekessler.com
`jhietala-ptab@sternekessler.com
`
`
`Kent B. Chambers
`TERRILE, CANNATTI & CHAMBERS LLP
`kchambers@tcciplaw.com
`
`
`6
`
`
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