`571-272-7822
`
`
`
` Paper 41
`
`Entered: February 8, 2013
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner,
`
`
`
`
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`____________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`____________
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`TIERNEY, Lead Administrative Patent Judge.
`
`
`
`DECISION
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`A conference call was held on February 5, 2013, at approximately 2:00 p.m.
`
`involving:
`
`
`
`
`
`
`Erika Arner and Joseph Palys, counsel for SAP
`1.
`2. Martin Zoltick and Danny Huntington, counsel for Versata,
`3. Michael Tierney, Sally Medley and Rama Elluru, Administrative
`
`Patent Judges.
`
` A
`
` court reporter was present on the call.1 The purpose of the call was to discuss
`
`the Schedule (Paper 37) and the parties’ lists of motions (Papers 38 and 39).
`
`
`
`The parties and the Board discussed the times set forth in the Schedule to
`
`determine whether the Schedule should be expedited. Specifically, petitioner
`
`requested that the Board expedite the times set forth in the Schedule as petitioner
`
`takes the position that the 35 U.S.C § 101 issue is a threshold legal issue in the case
`
`that can be resolved more quickly than the current Schedule envisions and that no
`
`further briefing would be required on the part of the petitioner.
`
`
`
`Patent owner opposed petitioner’s request. According to the patent owner,
`
`an expedited schedule would be premature because there are outstanding claim
`
`construction issues that could affect resolution of the § 101 issues. Patent owner
`
`indicated that an expedited schedule may be prejudicial to the patent owner.
`
`
`1 This Order summarizes statements made during the conference call. A more
`complete record may be found in the transcript, which is to be filed by Versata as
`an exhibit.
`
`
`
`2
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`In order to better understand the parties’ positions on expediting the times
`
`set forth in the Schedule, the Board ordered Petitioner to file a five (5) page
`
`brief by close of business on Wednesday, February 6, 2013, on three issues:
`
`(1) petitioner’s position as to why an expedited schedule of times on the § 101
`
`ground of unpatentability was appropriate; (2) petitioner’s position as to how the
`
`Board should handle the asserted ground of unpatentability pursuant to 35 U.S.C.
`
`§ 102; and (3) how petitioner’s proposed expedited schedule provided time for:
`
` Patent Owner to cross-examine Petitioner’s expert Dr. Siegel, who provided
`
`a declaration in support of the Petition,
`
` Patent Owner to cross-examine Dr. Boyd, who provided testimony in the
`
`district court litigation on patentability issues, if the Board authorizes such
`
`discovery,
`
` Patent Owner Response and Motion to Amend Claims,
`
` Petitioner’s Reply to Patent Owner Response and Opposition to
`
`Amendment,
`
` Patent Owner Reply to Opposition to Amendment, and
`
` Oral Hearing.
`
`The Board further ordered the patent owner to file a five (5) page opposition by
`
`close of business on Friday, February 8, 2013, including patent owner’s proposed
`
`schedule if it opposes petitioner’s proposal.
`
`
`
`3
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`PETITIONER:
`
`
`Erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
`
`4
`
`
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