Denying Request for Additional Pages CBM2013-00052, 53, 54


Takeaway: The Board may deny a party’s request for additional pages to complete that party’s replies if a showing of extraordinary circumstances has not been made.

In its Order, the Board declined Petitioner’s request for authorization to file a motion for waiver with respect to page limits set for Petitioner’s Replies to Patent Owner’s Responses.  The proposed motion for waiver was pursuant to 37 C.F.R. § 42.5(b) in regard to the page limits set by 37 C.F.R. § 42.24(c)(1).

Petitioner had asserted that additional pages (“approximately 30 pages each”) for each of its Replies to Patent Owner Responses were needed to address the issues presented in the Patent Owner’s Responses, in particular, standing issues, changes to the law under 35 U.S.C. § 101 in view of the recent Alice Corp. decision by the U.S. Supreme Court, and new claim constructions proposed by Patent Owner.  Patent Owner disagreed, pointing out that each of its Responses was under the page limits of 37 C.F.R. § 42.24(b)(2) and that nothing in the Responses necessitated additional pages. The Board agreed with Patent Owner and declined Petitioner’s request for additional pages.

As for Petitioner’s request for additional pages to address the Alice Corp. case, the Board had indicated that it would consider additional briefing but neither party made any such request.  And in regard to other issues such as standing, “Petitioner’s counsel [had] indicated that addressing those issues alone would be under the 15 pages allotted for each Petitioner ‘s Reply.”  Thus, the Board concluded that it would not be appropriate to waive the rules under these circumstances.

Callidus Software Inc. v. Versata Software, Inc. and Versata Development Group, Inc., CBM2013-00052, 00053, 00054
Paper 35: Order on Conduct of the Proceedings
Dated: August 15, 2014
Patents: 7,904,326 B2; 7,958,024 B2; 7,908,304 B2
Before: Howard B. Blankenship and Kevin F. Turner
Written by: Turner