Paper ____
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`Filed on behalf of: Versata Development Group, Inc.
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`By: Nancy J. Linck, Lead Counsel
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`Martin M. Zoltick, Backup Counsel
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`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
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`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
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SAP AMERICA, INC. ET AL.
`Petitioner
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`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`_______________
`
`
`VERSATA’S OPPOSITION TO PETITIONER’S REQUEST
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`
`
`
`
`
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`
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`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
`_______________
`
`
`VERSATA’S OPPOSITION TO PETITIONER’S REQUEST
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`Patent Owner Versata Development Group, Inc. (“Versata”) opposes
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`Petitioner’s Request for Expedited Determination of Invalidity under 35 U.S.C. §
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`101 (“Request”).
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`I.
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`Petitioner Has Not Justified Further Expediting the Schedule Beyond
`That Provided in the Scheduling Order
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`The PTAB requested petitioner to “set forth the specific reasons we need to
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`expedite this case on 101.” Tr. at 28. Petitioner has provided no adequate
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`explanation as to why expedited treatment beyond that provided in the PTAB’s
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`Scheduling Order is warranted.
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`In essence, to support its Request, Petitioner merely relies on the rationale
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`for establishing post-grant review under the AIA. That rationale was not intended
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`to disrupt the speedy, fair, and orderly procedures established under the AIA rules.
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`Further, Petitioner has not demonstrated that the granting of its request
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`would likely lead to any meaningful saving of resources.1 In fact, SAP suggests
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`that if it were to lose the expedited determination on § 101 on appeal, then the case
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`would return to the PTAB and discovery, briefing and determination of the § 102
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`issue would take place. Notably, such a procedure would require second
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`depositions of the same witnesses, further discovery through the same channels,
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`and unnecessarily prolong this review proceeding.
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`1 Given that Petitioner had every opportunity to litigate the § 101 issue years ago
`before the district court, but made the decision not to, it is incongruous for
`Petitioner to now assert that its primary concern is efficiency.
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`II.
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`Case CBM2012-00001
`Attorney Docket No: 4117-101
`Expediting the Current Schedule Will Severely Prejudice Versata By
`Denying It Relevant Discovery and Adequate Briefing Time
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`SAP’s position that, because “[p]atentability under 35 U.S.C. § 101 is a legal
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`issue[,] the Board may properly decide [that issue] now,” is wrong. While the
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`ultimate determination of whether a claim is directed to statutory subject matter is
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`a question of law, “determination of this question may require findings of
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`underlying facts specific to the particular subject matter and its mode of claiming
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`….” Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1055-56
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`(Fed. Cir. 1992); see also Br. for United States as Amicus Curiae, CLS Bank
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`International v. Alice Corp. Pty. Ltd., Appeal No. 2011-1301 (reh’g en banc) at 18
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`(Fed. Cir.) (“[T]he abstract idea question may turn on whether persons skilled in
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`the art would necessarily employ the claimed steps in order to make use of a
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`particular abstract idea. In addition, claim construction can have underlying
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`factual elements.”). Here, facts material to determination of the claim
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`interpretation and § 101 issues are in dispute.
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`In addition to the voluminous record that Versata is dealing with in this
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`CBM review, there are hundreds, if not thousands, of pages of documents, expert
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`reports and testimony from the record in the ‘350 patent infringement case that are
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`directly related to SAP’s factual assertions in this case regarding claim
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`interpretation and the § 101 issue. SAP’s proposed schedule will frustrate
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`Case CBM2012-00001
`Attorney Docket No: 4117-101
`meaningful discovery on these issues and, effectively, exclude from this trial
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`relevant evidence.
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`SAP attempts to justify denying Versata certain discovery on the § 101 issue
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`by telling the Board, “[n]o expert witnesses testified at trial on section 101 in the
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`underlying litigation.” Request at 4 n.1 (emphasis added). But, there was no such
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`testimony “at trial” only because SAP dropped its challenge under § 101 after
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`extensive, costly discovery was taken on the issue. For example, prior to SAP
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`abandoning its § 101 defense, (1) SAP’s expert Dr. Boyd issued an expert report in
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`which he set forth his opinion regarding unpatentability under § 101 (and § 102);
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`and (2) SAP’s other expert Dr. Tygar provided an extensive analysis explaining the
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`meaning of technical “terms of art” and his opinion as to how one of ordinary skill
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`in the art would have applied the relevant technology to the disputed claim
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`language. The testimony of these experts is directly related to the factual
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`assertions by SAP in this case regarding claim interpretation and § 101 issues.
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`Conducting discovery of SAP, Dr. Boyd and Dr. Tygar, preparing for and
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`cross-examining Dr. Siegel, evaluating the evidence obtained, and preparing an 80
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`page response in a period of about 3 weeks is unfair and would result in severe
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`prejudice to Versata, particularly given Versata’s reliance on the PTAB’s
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`Scheduling Order, which should be maintained.
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`3
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`Case CBM2012-00001
`Attorney Docket No: 4117-101
`Bifurcating the § 101 and § 102 Issues is Unwarranted
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`III.
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`SAP, as the party requesting such bifurcation, has the burden to establish
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`that bifurcation is warranted. Such bifurcation does not make sense in this case for
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`several reasons.
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`First, the evidence on the § 101 and § 102 issues is not wholly distinct. See
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`Mayo Collaborative Servs. v. Prometheus Labs, 132 S. Ct. 1289, 1304 (2012)
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`(recognizing that the § 101 and § 102 issues may “overlap”). Petitioner implicitly
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`admits as much by arguing that the claims at issue are unpatentable under § 101
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`because the claimed features are “routine [and] conventional.” Request at 3. Thus,
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`if Versata establishes that its claims are to new and nonobvious software
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`implemented on a computer (as it believes it can do), that determination would
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`impact the § 101 issue.
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`Second, under SAP’s scenario on page 5, bifurcation may prolong this
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`proceeding significantly and increase costs rather than serve the purposes of the
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`AIA. See Request at 5. If the Federal Circuit reversed a determination that the
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`claims were not patent eligible under § 101 and the case were to return to the
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`PTAB, the increase in time to final decision would increase by years (considering
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`two appeals). SAP’s assertion that the PTAB would still satisfy its statutory
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`obligation under 35 U.S.C.§ 326(11), id. at 5 n. 2, ignores the underlying purpose
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`4
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`Case CBM2012-00001
`Attorney Docket No: 4117-101
`of the PTAB’s expedited proceedings, i.e., to provide resolution of all issues faster
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`than a district court would do.
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`Third, while the Supreme Court has recently attempted to articulate an
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`“abstractness” test, it has provided little guidance as to how to apply this test. As
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`a consequence, the Federal Circuit has decided to address the issue en banc. See
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`CLS Bank Int'l v. Alice Corp. Pty. Ltd., App. No. 2011-1301, 484 Fed. Appx. 559
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`(Fed. Cir. 2012) (en banc order) (requesting the parties to address the issue of
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`“[w]hat test should the court adopt to determine whether a computer-implemented
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`invention is a patent ineligible ‘abstract idea’”) (argued today). Because there is
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`great uncertainty as to the test the Federal Circuit will adopt, it would be imprudent
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`for the Board to rush ahead with the § 101 issue while leaving behind the § 102
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`issue (and related discovery) for another day.
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`Finally, Petitioner identifies no prejudice that it will suffer if the PTAB were
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`to deny its request. In contrast, Versata will be prejudiced because it will be
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`deprived of its ability to take discovery on and develop the § 102 issue along with
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`the § 101 issue (which may inform the § 101 inquiry) and will not have sufficient
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`time (under SAP’s schedule) to fully and fairly present its case. Given that the
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`corresponding district court case has been ongoing for 5 years, this procedure
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`should not be rushed.
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`For the above reasons, the Board should deny Petitioner’s Request.
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`By:
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`Date: February 8, 2013
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`Case CBM2012-00001
`Attorney Docket No: 4117-101
`Respectfully submitted,
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`
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`/s/ Martin M. Zoltick
`
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`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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`
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`6
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`Case CBM2012-00001
`Patent 6,553,350
`Attorney Docket No: 4117-101
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 8th day of February, 2013, a true and correct
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`
`
`
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`copy of the foregoing VERSATA’S OPPOSITION TO PETITIONER’S
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`REQUEST, was served, in accordance with the parties’ electronic service
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`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:
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`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
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`
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`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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