Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 1 of 23 PageiD #: 31665
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`VERSATA SOFTWARE, INC., f/kla
`TRILOGY SOFTWARE, INC.;
`VERSATA DEVELOPMENT GROUP,
`INC., f/k/a TRILOGY DEVELOPMENT
`GROUP, INC.; and VERSATA
`COMPUTER INDUSTRY SOLUTIONS,
`INC., f/kla TRILOGY COMPUTER
`INDUSTRY SOLUTIONS, INC.,
`
`Plaintiffs,
`
`v.
`
`SAP AMERICA, INC. and SAP AG,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§ CIVIL ACTION NO. 2:07-CV-153-CE
`§
`§
`§
`§ JURY TRIAL DEMANDED
`§
`§
`§
`§
`
`VERSATA'S RESPONSE TO
`SAP'S RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW OR NEW
`TRIAL REGARDING LIABILITY ISSUES (DKT. NO. 351)
`
`VERSATA EXHIBIT 2093
`SAP v. VERSATA
`CASE CBM2012-00001
`
`

`
`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 2 of 23 PageiD #: 31666
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................... 1
`
`ARGUMENT ....................................................................................................................... 2
`
`A.
`
`B.
`
`SAP Fails To Apply The Proper Deference To The Jury's
`Verdict. ..................................................................................................................... 2
`
`The Jury's Verdict Of Infringement Is Supported By
`Substantial Evidence ................................................................................................ 2
`
`1.
`
`2.
`
`3.
`
`Versata Presented More Than Sufficient Proof That
`The Accused Software Products-As Made And
`Sold By SAP-Contain Computer Program
`Code/Instructions That Met The Elements Of The
`Asserted Claims ........................................................................................... 2
`
`Versata Presented More Than Sufficient Proof That
`SAP Also Infringed Claim 29 Indirectly Through
`Inducement And Contributory Infringement. .............................................. 9
`
`Versata Presented More Than Sufficient Evidence
`That The Requirement Of
`"Denormalized
`Numbers" As Construed Was Met.. ........................................................... lO
`
`C.
`
`SAP Is Not Entitled To JMOL Based On Its Best Mode
`Invalidity Defense-The Jury Did Not Err In Rejecting
`That Defense .......................................................................................................... 14
`
`1.
`
`2.
`
`3.
`
`The Jury Could Have Reasonably Credited The
`Inventor's Testimony That "Group Combinations"
`Were Not Necessarily The Best Mode Of Practicing
`His Invention In 1996 When The Patents Were
`Filed ........................................................................................................... 14
`
`The Jury Was Not Required To Find That The
`Patents
`Failed
`To
`Disclose
`"Group
`Combinations"-There Was Substantial Evidence
`To The Contrary ......................................................................................... l5
`
`The Jury Was Not Required To Find That "Group
`Combinations"
`Is Required To Practice The
`Claimed
`Inventions-There Was Substantial
`Evidence To The Contrary ......................................................................... l5
`
`

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`D.
`
`SAP's Purported Presentation Of A Host Of "Other Bases"
`For JMOL Or A New Trial Is Insufficient To Create An
`Issue For Post Trial Or On Appeal. ...................................................................... .16
`
`III.
`
`CONCLUSION .................................................................................................................. 16
`
`11
`
`

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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 4 of 23 PageiD #: 31668
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
`501 F.3d 1307 (Fed. Cir. 2007) .................................................................................................. 8
`
`AccuScan, Inc. v. Xerox Corp.,
`76 Fed. Appx. 290 (Fed. Cir. 2003) ........................................................................................ .13
`
`Ball Aersol and Specialty Container, Inc. v. Limited Brands, Inc.,
`555 F.3d 984 (Fed. Cir. 2009) .................................................................................................... 8
`
`Biodex Corp. v. Lore dan Biomedical, Inc.,
`946 F.2d 850 (Fed. Cir. 1991) .................................................................................................. 13
`
`Collaboration Props., Inc. v. Tandberg ASA,
`No. 05-CV-1940, 2006 U.S. Dist LEXIS 42465 (N.D. Cal. June 23, 2006) ............................. 7
`
`Conoco, Inc. v. Energy & Envtl. Int'l, L.C.,
`460 F.3d 1349 (Fed. Cir. 2006) .................................................................................................. 6
`
`Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) .................................................................................................. 8
`
`Eaton Corp. v. Parker-Hanni.fin Corp.,
`292 F.Supp.2d 555 (D. Del. 2003) .................................................................................... .14, 15
`
`Ecolab, Inc. v. Paraclipse, Inc.,
`285 F.3d 1362 (Fed. Cir. 2002) ................................................................................................ 12
`
`Eli Lilly & Co. v. Barr Labs., Inc.,
`251 F.3d 955 (Fed. Cir. 2001) ...................................................................................... 14, 15, 16
`
`Ellis v. Weasler Eng'g, Inc.,
`258 F.3d 326 (5th Cir. 2001) ..................................................................................................... 2
`
`Finisar Corp. v. DirecTV Group, Inc.,
`523 F.3d 1323 (Fed. Cir. 2008) .................................................................................................. 9
`
`Frazier v. Honeywell Int'l, Inc.,
`518 F. Supp. 2d 831 (E.D. Tex. 2007) ....................................................................................... 2
`
`Grenada Steel Indus., Inc. v. Ala. Oxygen Co.,
`695 F.2d 883 (5th Cir. 1983) .............................................................................................. .3, 15
`
`111
`
`

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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 5 of 23 PageiD #: 31669
`
`i4i Ltd P'ship v. Microsoft Corp.,
`No. 6:07-CV-113, 2009 U.S. Dist. LEXIS 70104 (E.D. Tex. Aug. 11, 2009) ................ passim
`
`Int'l Rectifier Corp. v. IXYS Corp.,
`361 F.3d 1363 (Fed. Cir. 2004) .......................................................................................... 2, 3, 6
`
`Microprocessor Enhancement Corp. v. Tex. Instruments Inc.,
`520 F.3d 1367 (Fed. Cir. 2008) .................................................................................................. 7
`
`Omega Eng 'g. Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ................................................................................................ 13
`
`Pall Corp. v. PTI Techs., Inc.
`259 F.3d 1383 (Fed. Cir. 2001) ................................................................................................ 13
`
`Pineda v. United Parcel Serv., Inc.,
`360 F.3d 483 (5th Cir. 2004) ..................................................................................................... 2
`
`Reeves v. Sanderson Plumbing Prods., Inc.,
`530 U.S. 133 (2000) ................................................................................................................... 2
`
`Ricoh Co. Ltd v. Katun Corp.,
`486 F. Supp. 2d 395 (D.N.J. 2007) ............................................................................................ 7
`
`SRI Int'l Inc. v. Internet Sec. Sys.,
`No. 04-1199-SLR, 2009 U.S. Dist. LEXIS 73981 (D. Del. Aug. 20, 2009) ............................. 8
`
`Storage Computer Corp. v. Veritas Software Corp.,
`2004 U.S. Dist. LEXIS 3887 (N.D. Tex. 2004) ......................................................................... 8
`
`Storage Computer Corp. v. Veritas Software Corp.,
`2004 U.S. App. LEXIS 14543 (Fed. Cir., June 15, 2004) ......................................................... 8
`
`Versata Software, Inc. v. Sun Microsystems, Inc.,
`No. 2:06-CV-358-TJW, 2008 U.S. Dist. LEXIS 63645 (E.D. Tex. Aug. 19, 2008) ............. 1, 6
`
`Warner-Jenkinson Co. v. Hilton Davis Chern. Co.,
`520 u.s. 17 (1997) ................................................................................................................... 13
`
`Wenger Mfg. v. Coating Machinery Sys., Inc.,
`239 F.3d 1225 (Fed Cir. 2001) ................................................................................................. 13
`
`Yodlee, Inc. v. Cashedge, Inc.,
`No. C-05-01550-SI, 2006 U.S. Dist. LEXIS 86699 (N.D. Cal. Nov. 29, 2006) ....................... 7
`
`iv
`
`

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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 6 of 23 PageiD #: 31670
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`Plaintiffs (collectively, "Versata") file this response in opposition to the Renewed Motion
`
`for Judgment as a Matter of Law (JMOL) or New Trial regarding liability issues. (Dkt. No. 351.)
`
`I. INTRODUCTION
`
`SAP is not entitled to reversal of the jury's verdict on any of the infringement or validity
`
`issues presented in its motion, which were all factual matters for the jury. Versata presented
`
`substantial and credible evidence on every issue where it bore the burden of proof. The jury was
`
`certainly entitled to discount the credibility of SAP's evidence and instead credit Versata's. The
`
`"battle of the experts" and the conflicting evidence were classic matters for the jury to resolve,
`
`and not matters for reversal here, particularly given the sufficiency ofVersata's evidence.
`
`SAP is not entitled to its JMOL request on the basis of the "program code/instructions"
`
`claim limitations. Versata presented substantial evidence through Dr. Nettles that these
`
`limitations as construed were met by the prograrn source code of SAP's accused software
`
`products-as made and sold by SAP-such that SAP directly infringed. SAP incorrectly seeks to
`
`create the fiction that Versata's infringement case was premised on a certain setup or use of the
`
`SAP products. SAP's argument is also incorrectly premised on implying some new, unspecified
`
`construction of the term "instructions," which is contrary to the claim constructions given by the
`
`Court and agreed to by SAP. SAP's implied claim-construction argument was rejected by Judge
`
`Ward in the Sun case, and earlier abandoned by SAP in this case. Furthermore, unlike the case
`
`law cited by Versata, the case law that SAP cites is inapplicable because it does not address
`
`computer software claims with the "program code/instructions" language as at issue here.
`
`SAP's argument on indirect infringement is premised on these same incorrect assertions.
`
`V ersata presented substantial evidence that the computer software sold by SAP directly infringes
`
`apparatus claim 29 of the '350 Patent when installed on a computer as intended by SAP, and
`
`without any particular further setup or use. V ersata also presented substantial evidence of the
`
`other elements of indirect infringement, such that the jury was entitled to find indirect
`
`infringement.
`
`Austin 54074
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`SAP is also not entitled to its JMOL request based on the "denormalized number" term
`
`contained in the Court's constructions of the "pricing adjustment" and "pricing information"
`
`claim language. SAP's argument is premised on impermissibly presenting a new construction of
`
`"denormalized numbers." The jury's verdict cannot be set aside on this basis.
`
`On the issue of best mode-where SAP bore the burden ofproofby clear and convincing
`
`evidence-the jury had several independent bases for rejecting this invalidity defense by SAP.
`
`II. ARGUMENT
`SAP Fails To Apply The Proper Deference To The Jury's Verdict.
`
`A.
`
`"The jury's verdict is afforded great deference." Pineda v. United Parcel Serv., Inc., 360
`
`F.3d 483, 486 (5th Cir. 2004). SAP cannot prevail unless the facts and inferences point so
`
`strongly in favor of SAP that a rational jury could not reach a contrary verdict. Frazier v.
`
`Honeywell Int'l, Inc., 518 F. Supp. 2d 831, 835 (E.D. Tex. 2007) (quoting Pineda, 360 F.3d at
`
`486).
`
`In deciding this motion, the Court must review all evidence of record, and draw all
`
`reasonable inferences in favor of Versata. Ellis v. Weasler Eng'g, Inc., 258 F.3d 326, 337 (5th
`
`Cir. 2001), as amended, (citing Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
`
`(2000)). Moreover, the Court must "disregard all evidence favorable to the moving party that the
`
`jury is not required to believe." Ellis, 258 F.3d at 337. This last requirement is particularly
`
`pertinent here in light of the extensive testimony from SAP witnesses which was contradicted by
`
`other evidence or testimony. See Exhibit A. This case, more than most patent cases, turned on
`
`the credibility of SAP's witnesses. Yet, SAP repeatedly ignores this standard of review.
`
`B.
`
`The Jury's Verdict Of Infringement Is Supported By Substantial Evidence.
`V ersata Presented More Than Sufficient Proof That The Accused Software
`1.
`Products-As Made And Sold By SAP-Contain Computer Program
`Code/Instructions That Met The Elements Of The Asserted Claims.
`
`a)
`
`Application Of The Claim Language As Construed To SAP's Accused
`Products Was A Question Of Fact For The Jury.
`
`SAP argues that, as a matter of law, the claim language cannot be applied to SAP's
`
`products as sold. But SAP is fundamentally mistaken: Federal Circuit law is that the application
`
`of claim language as construed to the accused products is a question of fact for the jury. See Int 'l
`
`Austin 54074
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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 8 of 23 PageiD #: 31672
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`Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1374-5 (Fed. Cir. 2004). At trial, this issue
`
`played out as such issues normally do--as a classic battle of the experts. Compare T.Tr.
`
`(8/18/09AM) at 135:21-136:9 (Dr. Nettles testifying the "writing of that code means that the
`
`code has been configured to implement these--these particular functions or to be able to cause
`
`the computer to do things") and id. at 138:8-11 (Dr. Nettles testifying that "one form of the
`
`computer readable program code [is] the source code in the SAP accused products") with T.Tr.
`
`(8/24/09 AM) at 159:14-20 (Dr. Boyd testifying that Dr. Nettles use of the SAP products "causes
`
`different [but unidentified] computer instructions" to be created). The jury credited Versata's
`
`evidence and it is improper to ask the Court to overturn the jury's decision on such matters. See
`
`Grenada Steel Indus., Inc. v. Ala. Oxygen Co., 695 F.2d 883, 889-890 (5th Cir. 1983) (In the
`
`context of a JMOL request the Court may not question the jury's resolution of a "classic battle of
`
`the experts.").
`
`b)
`
`Versata Presented Detailed And Multi-Faceted Evidence Showing That
`SAP's Products Infringe As Made And Sold.
`
`SAP is also wrong to argue that Versata's infringement case was premised on the
`
`proposition that a "skilled programmer could alter or rewrite programs of a general purpose
`
`computer to do almost anything software can do." SAP's JMOL at 2. Similarly, SAP's assertion
`
`that Versata's evidence of direct infringement rested "upon a version [of SAP's products]
`
`modified by [Versata's] expert" is simply false. See SAP's JMOL at 5. To the contrary,
`
`Versata's infringement case was premised on the program source code embodied in SAP's
`
`accused computer readable media as made and sold by SAP. Dr. Nettles specifically testified
`
`that SAP's program source code-as made and sold by SAP-met all of the "program
`
`code/instructions" elements, namely:
`•
`"computer readable program code configured to cause a computer" (' 400 patent
`claims 31, 35 and 36), construed as "program instructions to cause a computer,
`including software providing those instructions,"1
`"computer instructions to implement" ('350 patent claims 26 and 28), construed
`as "computer instructions causing a computer to implement,"2 and
`
`•
`
`1 See T.Tr. (8/26/09 AM) 10:7-20 (the Court construing "computer readable program code configured to cause");
`see also id. at 100:16-19 (Court providing this definition to the jury in the jury charge).
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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 9 of 23 PageiD #: 31673
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`•
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`"computer program instructions capable of' ('350 patent claim 29), which was
`not proposed for construction by either party.
`
`As Dr. Nettles explained, "the most detailed evidence [he] looked at was that [he]
`
`examined the source code that the products [were] written in." T.Tr. (8118/09 AM) at 66:9-24.
`
`Based on his investigation of SAP's program code, Dr. Nettles testified that under the Court's
`
`construction of the "computer instructions to implement" claim term of claims 26 and 28 of the
`
`'350 Patent (see T.Tr. (8/18/09AM) at 71:3-12), SAP's computer readable media infringed:
`
`Q. And the SAP accused software products as shipped, does it include computer
`instructions to implement all these parts of the claim [26 of the '350 Patent]?
`A. That's correct.
`
`!d. at 73:13-74:1 (emphasis added). Likewise, in applying the "computer readable program code
`
`configured to cause" language of claims 31, 35 and 36 ofthe '400 Patent, Dr. Nettles testified:
`
`Q. Can you explain to the jury how this language, computer readable program
`code configured to cause, is met by the SAP accused products?
`A. Well, the code for the SAP products that we've been examining and that
`implement the SAP products that's stored on a disk, DVD, a CD a hard disk, in
`memory, those are all examples of computer readable media. And that program
`code was written by the SAP engineers so that it could perform the functions
`that we've been talking about. So that writing of that code means that the code
`has been configured to implement these-these particular functions or to be able
`to cause the computer to do things.
`
`T.Tr. (8/18/09 AM) at 135:21-136:9 (emphasis added); id. at 137:15-139:19; see also id. at
`
`125:17-127:7 (explaining SAP's infringement of apparatus claim 29 of the '350 patent). Dr.
`
`Nettles' application of these claim terms, together with his testimony and the multiple pieces of
`
`overlapping evidence he presented for each claim element (see Exhibit B attached hereto), shows
`
`that the jury had more than a legally sufficient evidentiary basis upon which to fmd that the
`
`accused products as made and sold by SAP infringed, such that SAP was a direct infringer.
`
`As Dr. Nettles testified, based on the source code and other documentary evidence he
`
`reviewed, there was "infringement in this case independent of [his] use of SAP's product...."
`
`T.Tr. (8/18/09 AM) at 5:24-6:1; see also Exhibit B attached hereto. Dr. Nettles' used SAP's
`
`2 See Dkt. 124 (the parties' agreed P.R. 4-3 submission); see also T.Tr. (8/26/09 AM) at 100:13-15 Gury charge).
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`Austin 54074
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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 10 of 23 PageiD #: 31674
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`accused products in the manner in which they were intended to be used3-and without
`
`modification or alteration of the program source code4-simply to test and confirm what his
`
`program source code-based investigation found:
`
`the computer readable media made by SAP
`
`contains program code/instructions that meets each of the asserted claims as construed.
`
`c)
`
`In Reality, SAP's Argument Depends Upon An Unstated And
`Inappropriate Request For An Additional Claim Construction.
`
`A careful examination of SAP's argument reveals that its JMOL request depends entirely
`
`on an unstated (and untimely) attempt to further construe the term "instructions," and to do so in
`
`a very particular manner so as to afford SAP a non-infringement argument. Without expressly
`
`saying what this further construction is, SAP's motion implies that computer or program
`
`"instructions" must be something different than the source code to which Dr. Nettles pointed.5
`
`SAP appears to contend that "instructions" must, as a matter of law, refer to things like access
`
`sequences and condition types created using SAP's standard setup data entry screens. Premised
`
`on this new, unspecified implied construction of "instructions," SAP goes on to suggest that, if
`
`such access sequences and condition types must first be input by SAP's customers (using SAP's
`
`provided setup data entry screens) before the claimed features embodied in the program source
`
`code can be used, then as a matter of law SAP is not a direct infringer. See SAP's JMOL at 4-6.
`
`SAP's position is flawed in numerous respects.
`
`First, SAP's position is an obvious end-run around the claim construction process. SAP
`
`never sought to construe the term "instructions" at all-much less in the precise manner it now
`
`seeks to define the term. As such, SAP waived the argument it now makes. See i4i Ltd. P'ship v.
`
`Microsoft Corp., No. 6:07-CV-113, 2009 U.S. Dist. LEXIS 70104, *12 (E.D. Tex. Aug. 11,
`
`3 See T.Tr. (8/18/09 AM) at 138:16-143:17 (Dr. Nettles' testimony about his use of the SAP products and how it was
`consistent with the testimony of SAP's witness Dr. Neiswand and SAP's documentation); see also T.Tr (8/20/09
`AM) at 196:4-12 (SAP witness Ed Tobin testifying that Colgate uses the SAP products in the same manner).
`4 T.Tr. (8/18/09 AM) at 135:7-11 (Dr. Nettles testifying "I made absolutely no modifications to the code of SAP's
`products"); see also id. at 138:25-139:19 (no modifications to program code needed for infringement of any claim).
`5 See T.Tr. (8/19/09 AM) at 66:18-22 ("Source code is how the computer programmers write the instructions ... ");
`id. at 72:22-73:23 (Equating source code with "computer instructions that are written by SAP's programmers"); id.
`at 76:24-77:16 ("[S]ource code is-- that's the computer software in the accused product"); id. at 138:8-24 ("One
`form of the computer readable program code [is] the source code in the SAP accused products.").
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`5
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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 11 of 23 PageiD #: 31675
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`2009) (quoting Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1359 (Fed. Cir.
`
`2006)("[L ]itigants waive their right to present new claim construction disputes if they are raised
`
`for the first time after trial.")).
`
`Second, SAP did attempt to achieve the result it now seeks with respect to similar
`
`language construed in the related Versata v. Sun case, but that attempt was rejected by Judge
`
`Ward. Specifically, in the Versata v. Sun claim construction process, in which SAP participated,
`
`SAP asked the Court to construe "computer readable program code configured to cause" (exactly
`
`the language at issue here) as "computer program instructions that, without modification or
`
`supplementation, direct the computer to perform the recited operation." Versata Software, Inc. v.
`
`Sun Microsystems, Inc., No. 2:06-CV-358-TJW, 2008 U.S. Dist. LEXIS 63645, at *35-36 (E.D.
`
`Tex. Aug. 19, 2008) (emphasis added); Budwin Decl. Ex. 1 at 27. Both Sun and Versata pointed
`
`out that this extra restriction of "without modification of supplementation" was wrong, and Judge
`
`Ward agreed, expressly ruling that "nothing in the intrinsic record would limit 'program
`
`instructions' to exclude software providing those instructions." Versata Software, 2008 U.S.
`
`Dist. LEXIS 63645, at *35-36 (emphasis added); see also Budwin Decl. Ex. 2 at 37:21-40:4;
`
`Bud win Decl. Ex. 1 at 27.
`
`Judge Ward's construction rejecting SAP's argument was then adopted by the Court in
`
`this case and SAP agreed to it. T.Tr. (8/26/09 AM) at 12:2-8 (SAP's counsel: "With respect to
`
`the supplemental claim construction, Your Honor, as provided, we thank you for that. We're
`
`comfortable with that."); see also id. at 10:7-20 (Court's construction). Having agreed to the
`
`construction, SAP cannot now seek further or changed constructions.
`
`In light of this record, SAP has no basis to ask the Court to reconsider, modify, or
`
`supplement the claim construction. And whether the accused products in fact met that language
`
`as construed-including the "program code/instructions" element-was an issue of fact for the
`
`jury. Int'l Rectifier, 361 F.3d at 1374-75. There is ample evidence to support the jury's verdict
`
`in V ersata' s favor.
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`Austin 54074
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`Case 2:07-cv-00153-CE Document 357 Filed 10/22/09 Page 12 of 23 PageiD #: 31676
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`d)
`
`SAP's Case Law Is Inapplicable To The Claim Language At Issue.
`
`The case law SAP cites in support of its JMOL request is simply inapposite. Indeed,
`
`none of the cases SAP cites deal with computer readable media claims or the particular
`
`constructions thereof as at issue here. Furthermore, and contrary to SAP's position, the weight
`
`of the relevant authority holds that computer readable media claims containing "configured
`
`to"/"to implement" language as at issue here describe the capability of the apparatuses; they do
`
`not claim the activity itself. For example, in Collaboration Props., Inc. v. Tandberg ASA, No.
`
`05-CV-1940, 2006 U.S. Dist LEXIS 42465, at *15-16 (N.D. Cal. June 23, 2006) the Court
`
`determined, in the context of an invalidity challenge, that "configured to" claim language did not
`
`impermissibly inject a use requirement into an apparatus claim. This case was cited with
`
`approval by the District of New Jersey, which held that:
`
`These courts found that claims containing both a physical description of an
`apparatus and a description of the apparatus' function, e.g., 'communicates,'
`'populates,' 'configured to,' and 'upon activation,' were not impermissible
`apparatus-method claims. Instead, these claims simply 'use active language to
`describe the capability of the apparatuses; they do not claim the activity itself'
`
`Ricoh Co. Ltd. v. Katun Corp., 486 F. Supp. 2d 395, 402 (D.N.J. 2007) (emphasis added)
`
`(quoting Yodlee, Inc. v. Cashedge, Inc., No. C-05-01550-SI, 2006 U.S. Dist. LEXIS 86699, at *4
`
`(N.D. Cal. Nov. 29, 2006)). The Federal Circuit agreed with this reasoning, determining that a
`
`"pipelined processor for executing instructions" was "clearly limited to a pipelined processor
`
`possessing the recited structure and capable of performing the recited functions."
`
`Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir.
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`2008) (emphasis added). Direct infringement of the type of claim at issue here occurs whenever
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`the defendant makes and sells software products (i.e. computer readable media) that possess the
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`recited program code/instructions (i.e. the recited structure), as Dr. Nettles explained at trial.
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`None of the cases cited by SAP mandate that Dr. Nettles' testimony be rejected and that
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`the jury's verdict be set aside. As an initial matter, none of the cases cited by SAP dealt with the
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`"configured to" or "program code/instructions" language at issue here. Rather, and unlike
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`Versata's infringement case, which put forth extensive direct evidence of SAP's infringement by
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`way of the accused products as made and sold by SAP (i.e., the SAP program source code), each
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`of the cases relied upon by SAP involved a dispute over the sufficiency of the plaintiffs'
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`circumstantial evidence of infringement:
`In the Ball Aersol case, the construction of the claims at issue required proof that
`•
`the protrusions from the base of the candle were "resting upon" the cover. Ball
`Aersol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 994
`(Fed. Cir. 2009). The plaintiff provided no direct evidence and merely argued
`that the protrusions were "reasonably capable" of resting on the cover.
`in the ACCO Brands case, which dealt solely with indirect
`• Similarly,
`infringement, the construction of the claims at issue required the pin in the
`claimed lock to "extend through the security slot after the slot engagement
`member is rotated .... " ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d
`1307, 1310-11 (Fed. Cir. 2007). The plaintiff provided no direct evidence ofthis,
`and instead argued that "key lock users will use the lock in an infringing manner
`at least some of the time .... " Id. at 1312.
`• Likewise, in the Cross Medical case, the means-plus-function claim language at
`issue was construed to require that two things be "connect[ ed] during a surgical
`procedure." Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424
`F .3d 1293, 1305 (Fed. Cir. 2005) (brackets in original). The plaintiff provided no
`direct evidence that "the structural limitation that the anchor seat contact bone"
`was performed by or at the direction of the defendant, who was not a surgeon. Id.
`at 1311-12.
`In the Storage Computer case, the claim language at issue required that data be
`"writ[ten]" in response to certain events. Storage Computer Corp. v. Veritas
`Software Corp., 2004 U.S. Dist. LEXIS 3887, *6-8 (N.D. Tex. 2004). The Court
`found that the plaintiff lacked direct evidence that such "writing" occurred in
`response to the recited events. Id. Since 2004 this case has not been cited in any
`other decisions and the case settled before the appeal was heard. See Storage
`Computer Corp. v. Veritas Software Corp., 2004 U.S. App. LEXIS 14543 (Fed.
`Cir., June 15, 2004).
`• Finally, in the SRI International case, infringement only occurred if two separate
`software products were combined to form an infringing device. Rather than
`provide direct evidence that the two software products were combined to make an
`infringing device, the plaintiff instead argued that it was "reasonable to believe
`the customers will use the products together." SRI Int'l Inc. v. Internet Sec. Sys.,
`No. 04-1199-SLR, 2009 U.S. Dist. LEXIS 73981, *25 (D. Del. Aug. 20, 2009).
`
`•
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`Unlike these cases, Versata's infringement case does not depend upon whether it was
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`"reasonable" or "likely" to assume that SAP's accused products were used in a certain way.
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`Instead, Versata presented substantial direct evidence that the accused computer readable media
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`as made and sold by SAP contains the infringing program code/instructions. As such, SAP's
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`case law has no application here. 6
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`2.
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`Versata Presented More Than Sufficient Proof That SAP Also Infringed
`Claim 29 Indirectly Through Inducement And Contributory Infringement.
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`SAP's attack on the jury's verdict of indirect infringement of claim 29 of the '350 Patent
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`IS premised on the same incorrect arguments that SAP presents with respect to direct
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`infringement of the asserted claims. SAP's arguments here similarly fail. Like direct
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`infringement, indirect infringement "is a question of fact that is reviewed for substantial evidence
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`when tried to a jury." i4i Ltd. P'ship., 2009 U.S. Dist. LEXIS 70104 at *17 (citing Finisar Corp.
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`v. DirecTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008)). Versata presented more than
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`legally sufficient proof that SAP was liable for indirect infringement of '350 claim 29, which
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`requires a computer loaded with "computer program instructions capable of' performing the
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`recited operations.7
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`SAP incorrectly argues that Versata presented no proof of resulting direct infringement.
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`To the contrary, Dr. Nettles explained that there is direct infringement of '350 claim 29
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`whenever the accused software products as made and sold by SAP are installed on a computer.
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`T.Tr. (8/18/09 PM) at 7:1-4. Claim 29 is an apparatus claim-not a method claim. As such, as
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`Dr. Nettles explained, direct infringement by SAP's customers necessarily occurs each and every
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`time an SAP customer receives the accused SAP software and installs the software as written by
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`SAP on their computer systems (making the infringing apparatus required by this claim). Id. In
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`short, there is direct infringement by making the claimed computer apparatus by installing the
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`SAP software, regardless of what use is made of the software. T.Tr. (8/18/09 PM) at 10:7-10.
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`6 The "configured to" language SAP focuses upon is typical software apparatus claim language. A search on the
`USPTO website reveals 1,739 issued patents that use the phrase "code configured to" (including 3 SAP patents), and
`1,446 issued patents that use the phrase "program configured to" (including 28 SAP patents). Thus, SAP cannot
`suggest that the language in question here is unusual or peculiarly limiting. It is