`571-272-7822
`
`
`
` Paper 45
`
`Entered: February 21, 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 JONI Y. CHANG,
`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
`
`
`
`Petitioner (“SAP”) has filed a motion requesting that the Board exercise its
`
`discretion and expedite consideration of the patentability of claims 17 and 26-29 of
`
`Versata’s U.S. Patent No. 6,553,350 (‘350) under 35 U.S.C. § 101. Mot., Paper 40
`
`at 1. Versata opposes this request. Opp., Paper 42.
`
`
`
`SAP contends that consideration of patentability under § 101 should be
`
`expedited as early resolution of this dispositive issue helps further the Board’s goal
`
`of establishing a more efficient and streamlined patent system by significantly
`
`reducing the proceeding’s pendency and avoiding unnecessary discovery and
`
`briefing costs. Mot. 1-2. According to SAP, the § 101 issue is a legal issue that
`
`would resolve the patentability of the instituted claims, claims 17 and 26-29. Id. at
`
`2. SAP states however, that should the claims ultimately be held patentable under
`
`§ 101, the proceeding would then continue on to a final determination on the
`
`remaining instituted ground of patentability under § 102. Id. at 5.
`
`
`
`Versata opposes SAP’s request alleging that SAP failed to provide a
`
`sufficient explanation as to why expedited treatment of the § 101 issue was
`
`warranted. Opp. 1. Versata notes that SAP has failed to demonstrate any
`
`meaningful savings of resources as SAP proposes and states that bifurcating the
`
`§ 101 and § 102 issues is unwarranted due to the potential for increased costs and
`
`delay.
`
`
`
`2
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`The Board agrees with SAP that resolution of the § 101 issue could serve a
`
`key purpose of the America Invents Act and help lead to an early disposition of the
`
`proceeding. The Board however, also agrees with Versata that bifurcating the
`
`§ 101 and § 102 issues has the potential to increase costs and delay should the
`
`claims be held patentable under § 101. SAP however, has agreed to withdraw the
`
`instituted grounds of unpatentability under § 102 should the Board order an
`
`expedited schedule. Reply, Paper 44. In light of SAP’s agreement to withdraw the
`
`§ 102 issue, we enter SAP requested expedited schedule as follows:
`
`
`
`
`
`
`
`DUE DATE 1 March 8, 2013
`DUE DATE 2 March 29, 2013
`DUE DATE 3
`April 5, 2013
`DUE DATES 4-6 Not provided for (conference call if needed)
`DUE DATE 7
`April 17, 2013
`
`A hearing (Due Date 7) is scheduled for 2:00 pm Eastern Time on April 17,
`2013 on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia.
`
`Please note that the oral argument will be open to the public. Information
`about public attendance is available at:
`http://tampa-wip.uspto.gov/ip/boards/public_hearing_info.jsp
`Five (5) spaces have been reserved for each party. If a party desires to have more
`than five people in attendance, the party should immediately notify the Board of
`the total number that they wish to have attend.
`Each party will have up to sixty minutes total to present its arguments.
`
`
`
`3
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`The Board will provide a stenographer for the oral argument. Consequently,
`the parties shall not provide their own stenographer. Unless otherwise ordered,
`the transcript will become part of the record and is not open to correction after the
`oral argument.
`
`It is:
`
`
`
`
`
`Ordered that the 35 U.S.C. §102 instituted grounds are withdrawn from this
`
`trial.
`
`
`
`Further Ordered that the times for taking action are reset as provided in this
`
`Order above, and a hearing is scheduled for April 17, 2013 at 2 pm.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`PETITIONER:
`
`
`Erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
`
`5
`
`
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