In its Order, the Board dismissed Patent Owner’s Motions to Exclude, noting that they would not be considered on the merits. The Board held that the Motions to Exclude were contradictory to the Board’s previous order and were also contradictory to arguments made by Patent Owner.
Patent Owner had previously requested authorization to file motions to strike Petitioner’s declarations. In its request for authorization, Patent Owner represented to the Board that the appropriate mechanism was to file a motion to strike as opposed to a motion to exclude. As the Board pointed out, Patent Owner never sought “clarification from the panel regarding whether Patent Owner could file the substance of the proposed motions to strike in the form of motions to exclude.” In addition, the Board noted that Patent Owner “appeared to agree that a motion to exclude would not be the appropriate mechanism for doing so.”
The Board denied Patent Owner’s request to file a motion to strike, and Patent Owner never sought rehearing of that Order. Instead, Patent Owner filed the instant Motions to Exclude for the same reasons advanced with respect to the motion to strike.
The Board, however, was not impressed. The Board explained that its previous Order made clear that Patent Owner was not authorized to brief the issues argued in the Motions to Exclude. “Whether Patent Owner styled the motion a motion to strike or a motion to exclude, the substance of the argument is the same and one for which the Board did not want briefing.” In response to Patent Owner’s argument that the motions were within the rules and consistent with orders from other proceedings, the Board stated that “Patent Owner knew that in these proceedings, the panel did not desire nor authorize such briefing.”
Finally, the Board pointed out the inconsistent positions taken by Patent Owner. On the one hand, Patent Owner previously argued that a motion to exclude would not be proper when requesting authorization to file a motion to strike. Patent Owner later argued the exact opposite, stating that a motion to exclude was appropriate. The Board was not persuaded:
Patent Owner’s contradictory representations made to the Board are troublesome. Patent Owner took it upon itself to do what it wanted to do regardless of the Order for these proceedings. Such action is a direct disregard for the guidance provided by the Board for these proceedings. As a result, we need not and will not consider Patent Owner’s motions to exclude.
Volusion, Inc. v. Versata Software, Inc. and Versata Development Group, Inc., CBM2013-00017; CBM2013-00018
Paper 42: Order on Conduct of the Proceeding
Dated: May 12, 2014
Patents 6,834,282 B1; 7,426,481 B1
Before: Howard B. Blankenship, Sally C. Medley, and Kevin F. Turner
Written by: Medley