Paper ____
`
`Filed on behalf of: Versata Development Group, Inc.
`
`By: Nancy J. Linck, Lead Counsel
`
`Martin M. Zoltick, Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
`
`Washington, DC 20005
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`Phone: 202-783-6040
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`Facsimile: 202-783-6031
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`E-mail: nlinck@rfem.com
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` mzoltick@rfem.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA, INC. ET AL.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`_______________
`
`
`PATENT OWNER VERSATA’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
`Filed on behalf of: Versata Development Group, Inc.
`
`By: Nancy J. Linck, Lead Counsel
`
`Martin M. Zoltick, Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
`
`Washington, DC 20005
`
`Phone: 202-783-6040
`
`Facsimile: 202-783-6031
`
`E-mail: nlinck@rfem.com
`
`
` mzoltick@rfem.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA, INC. ET AL.
`Petitioner
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`_______________
`
`
`PATENT OWNER VERSATA’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`Attorney Docket No: 4117-101
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to Decision – Institution of Covered Business Method Review (37
`
`C.F.R. § 42.208) dated January 9, 2013 (“Decision”) and in accordance with 77
`
`Fed. Reg. 48756, 48765-66 (Aug. 14, 2012), Patent Owner Versata Development
`
`Group, Inc. (“Versata”) hereby files and serves the following list of proposed
`
`motions:
`
`
`
`1. Motion Under 37 C.F.R. § 42.51(b)(2) for Additional Discovery
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`Versata seeks authorization to file a motion under 37 C.F.R. § 42.51(b)(2)
`
`for additional discovery establishing good cause why the requested additional
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`discovery is needed (37 C.F.R. § 42.224(a)) and that the discovery is limited to
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`evidence directly related to factual assertions advanced by SAP in the proceeding
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`(37 C.F.R. § 42.224(b)). Specifically, Versata seeks authorization to conduct the
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`following discovery from SAP:
`
`(1)
`
`Provide copies or make available for inspection and copying
`
`documents, electronically stored information and things (including the documents,
`
`ESI and things produced by SAP in the ‘350 infringement case) directly relating to
`
`(i) SAP’s factual assertions as to the alleged meaning of the following language of
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`claims 17 and 26-29 of the ‘350 patent: (1) sorting the pricing information, (2) the
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`pricing information that is less restrictive, (3) pricing types and pricing
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`Case CBM2012-00001
`Patent 6,553,350
`Attorney Docket No: 4117-101
`
`
`adjustments, and (4) pricing information; (ii) SAP’s factual assertions as to the
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`alleged unpatentability of claims 17 and 26-29 of the ‘350 patent under 35 U.S.C. §
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`101; and (iii) SAP’s factual assertions as to the alleged unpatentability of claims
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`17 and 26-29 of the ‘350 patent under 35 U.S.C. § 102, including: (a) SAP R/3
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`2.2A Online Documentation CD; and (b) SAP R/3 2.2B Online Documentation
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`CD.
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`(2)
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`Identify and make available for deposition those individuals
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`(including fact and expert witnesses involved in the ‘350 patent infringement case)
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`with specific knowledge directly relating to (i) SAP’s factual assertions as to the
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`alleged meaning of the following language of claims 17 and 26-29 of the ‘350
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`patent: (1) sorting the pricing information, (2) the pricing information that is less
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`restrictive, (3) pricing types and pricing adjustments, and (4) pricing information;
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`(ii) SAP’s factual assertions as to the alleged unpatentability of claims 17 and 26-
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`29 of the ‘350 patent under 35 U.S.C. § 101; and (iii) SAP’s factual assertions as
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`to the alleged unpatentability of claims 17 and 26-29 of the ‘350 patent under 35
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`U.S.C. § 102, including: (a) SAP R/3 2.2A Online Documentation CD; and (b)
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`SAP R/3 2.2B Online Documentation CD.
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`Contingent Motion Under 37 C.F.R. § 42.221 to Amend
`
`Case CBM2012-00001
`Patent 6,553,350
`Attorney Docket No: 4117-101
`
`
`
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`2.
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`Versata may move to amend one or more of the involved claims of the ‘350
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`patent, and will request entry of the claim amendments contingent upon the PTAB
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`issuing a final decision maintaining the claim construction set forth in the
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`Decision. Any such claim amendments will be made to respond to one or more of
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`the grounds of unpatentability involved in the trial, and will not enlarge the scope
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`of the claims of the ‘350 patent (37 C.F.R. § 42.221(a)(2)(i)) or introduce new
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`matter (37 C.F.R. § 42.221(a)(2)(ii)). Specifically, such claim amendments may be
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`directed to the terms “pricing types,” “pricing adjustments,” “pricing information”
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`and “denormalized numbers,” the meaning of which was addressed by the PTAB
`
`in the Decision at 11-17.
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`
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`
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`Date: February 1, 2013
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`Respectfully submitted,
`
`
`
`
`
` By: /s/ Martin M. Zoltick
`
`
`
`Nancy J. Linck, Lead Counsel
`
`
`Martin M. Zoltick, Back-up Counsel
`ROTHWELL, FIGG, ERNST
` & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`
`
`
`
`Attorneys for Patent Owner Versata
`Development Group, Inc.
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`Case CBM2012-00001
`Patent 6,553,350
`Attorney Docket No: 4117-101
`
`CERTIFICATE OF SERVICE
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`I hereby certify that on this 1st day of February, 2013, a true and correct
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`
`
`
`
`copy of the foregoing PATENT OWNER VERSATA’S LIST OF PROPOSED
`
`MOTIONS, was served, in accordance with the parties’ electronic service
`
`agreement, by electronic mail upon the following lead and backup counsel of
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`record for Petitioners SAP America, Inc. and SAP AG:
`
`Erika H. Arner, Lead Counsel
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`11955 Freedom Dr.
`Reston, VA 20190-5675
`Service E-mail: SAP-PGR@finnegan.com
`
`
`
`
`J. Steven Baughman, Back-up Counsel
`Ropes & Gray
`One Metro Center
`700 12th St., N.W., Suite 900
`Washington, DC 20005-3948
`Service E-mail: Steven.Baughman@ropesgray.com
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`/s/ Erik van Leeuwen
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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