UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAP AMERICAINC. AND SAP AG,
`Pet1t1oners,
`
`V.
`
`VERSATA DEVELOPMENT GROUP INC.,
`Patent Owner.
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`Before the honorable MICHAEL P. TIERNEY, SALLY C. MEDLEY and RAMA
`G. ELLURU.
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`RES QUEST FOR REHEARING
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAP AMERICAINC. AND SAP AG,
`Pet1t1oners,
`
`V.
`
`VERSATA DEVELOPMENT GROUP INC.,
`Patent Owner.
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`Before the honorable MICHAEL P. TIERNEY, SALLY C. MEDLEY and RAMA
`G. ELLURU.
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`RES QUEST FOR REHEARING
`
`
`
`TABLE OF CONTENTS
`
`1.
`
`11.
`
`Statement of Relief Requested ........................................................................ 1
`
`Preliminary Statement ..................................................................................... 1
`
`III.
`
`Requested Additional Briefing ....................................................................... 2
`
`A.
`
`The ’350 claims remain unpatentable under 35 U.S.C. § 101
`after Ultramercial ................................................................................. 2
`
`l.
`
`Ultramercial reaffirmed the section 101 framework
`applied by the Board .................................................................. 2
`
`2.
`
`The Board was correct that the ’350 claims cover an
`
`abstract idea—determining a price using organizational
`and product group hierarchies—and the Ultramercial
`decision did nothing to change this conclusion ......................... 3
`
`3.
`
`The Board’s conclusion that the claims are not drawn to a
`
`patentable application of the underlying abstract idea
`remains correct after Ultramercial ............................................. 5
`
`4.
`
`Several other factors distinguish the Board’s final
`decision from the district court decision reversed in
`
`Ultramercial ............................................................................... 8
`
`B.
`
`The Federal Circuit’s decision in Versata Software Inc. v. SAP
`America Inc, 106 USPQ2d 1649 (Fed. Cir. 2013) has no effect
`on the PGR proceeding ....................................................................... 1 1
`
`l.
`
`2.
`
`The Federal Circuit appeal remains active ............................... 12
`
`Even if the Federal Circuit mandate were to issue based
`
`on the May 1 opinion, there would be no final judgment
`in the litigation ......................................................................... l3
`
`3.
`
`Versata waived any claim and issue preclusion defense ......... 14
`
`IV.
`
`Conclusion .................................................................................................... 15
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`FEDERAL CASES
`
`Bilski v. Kappos,
`130 S. Ct. 3218(2010) ................................................................................. 2,3,5
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ........................................................................ 4, 9
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ............................................................................. 9
`
`Diamond v. Diehr,
`450 US. 175 (1981) ......................................................................................... 2,3
`
`Fresenius USA, Inc. et al. v. Baxter International,
`No. 2012-1334, -1335, slip op. (Fed. Cir. July 2, 2013) .................................... 12
`
`Gottschalk v. Benson,
`409 US. 63 (1972) ....................................................................................... 2, 3, 5
`
`In re Alappat,
`33 F.3d 1526 (Fed. Cir. 1994) ............................................................................... 9
`
`Mayo v. Prometheus,
`132 S.Ct. 1289 (2012) ................................................................................. 2,7,8
`
`Miller Brewing Co. v. Jos. Schlitz Brewing Co.,
`605 F.2d 990 (7th Cir. 1979) ............................................................................. 13
`
`Parker v. Flook,
`437 US. 584 (1978) ......................................................................................... 3, 7
`
`Research Corp. Techs. v. Microsoft Corp,
`627 F.3d 859 (Fed. Cir. 2010) ............................................................................... 9
`
`Ultramercial, Inc. v. Hula, LLC,
`107 USPQ2d 1193 (Fed. Cir. 2013) ........................................................... passim
`
`Vara’on Golf Co., Inc. v. Karsten Mfg. Corp,
`294 F.3d 1330 (Fed. Cir. 2002) .......................................................................... 13
`
`iii
`
`
`
`Versata Software Inc. v. SAP America Inc,
`106 USPQ2d 1649 (Fed. Cir. 2013) .............................................................. 1, 11
`
`FEDERAL STATUTES
`
`35 U.S.C. § 101 ................................................................................................ passim
`
`35 U.S.C. § 326(6) ................................................................................................... 11
`
`RULES
`
`Fed. R. App. P. 41 ................................................................................................... 13
`
`iv
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1037:
`
`Exhibit 1038:
`
`Exhibit 1039:
`
`Federal Circuit Letter Dated July 15, 2013 Requesting
`Response from Versata to SAP En Banc Petition
`
`Versata Software, Inc. et al. v. SAP America, Inc. et al.,
`Federal Circuit Appeals 2012-1029, -1049, Slip Op.
`dated May 1, 2013
`
`FreseniuSUSA, Inc. et al. v. Baxter International, Inc. et
`at, Federal Circuit Appeals 2012—1334, -1335, Slip Op.
`dated July 2, 2013
`
`
`
`1.
`
`STATEMENT OF RELIEF REQUESTED
`
`SAP requests that the Board deny Versata’s Request for Rehearing for the
`
`reasons set forth in the Petition for Post—Grant Review tiled September 16, 2012
`
`(“Petition,” “Pet,” Dkt. No. 1), SAP’S Response filed April 1, 2013 (“SAP
`
`Response,” Dkt. No. 58), and the requested additional briefing below.
`
`11.
`
`PRELIMINARY STATEMENT
`
`The Board correctly concluded that claims 17 and 26—29 are unpatentable
`
`under 35 U.S.C. § 101, and nothing in Versata’s Request for Rehearing
`
`(“Rehearing Request,” Dkt. No. 71) establishes that the Board misapprehended or
`
`overlooked any matter at issue in this proceeding. See Final Decision (Dkt.
`
`No. 36), p. 34. Because SAP has not had the opportunity to brief two recent
`
`Federal Circuit decisions—Ultramercz'al, Inc. v. Hula, LLC, 107 USPQ2d 1193
`
`(Fed. Cir. 2013) (“VX 2106”) and Versata Software Inc. v. SAPAmerica Inc, 106
`
`USPQ2d 1649 (Fed. Cir. 2013) (“SX 103 8”)—the Board authorized this opposition
`
`to address any potential impact of these decisions. The Board properly applied the
`
`law in the first instance and neither of these decisions changes the pertinent law or
`
`facts that formed the basis of the Final Decision and Initial Determination (Dkt.
`
`No. 36).1 Thus, Versata’s Request for Rehearing should be denied.
`
`
`
`1 The Board did not address claim and issue preclusion in the Final Decision
`because Versata dropped that argument from its Patent Owner’s Response.
`
`1
`
`
`
`III.
`
`REQUESTED ADDITIONAL BRIEFING
`
`The ’350 claims remain unpatentable under 35 U.S.C. § 101 after
`A.
`Ultramercial
`
`1.
`
`Ultramercial reaffirmed the section 101 framework applied
`
`by the Board
`
`Contrary to Versata’s allegation that the Board misapprehended or
`
`overlooked the proper legal analysis, Rehearing Request 12, the Federal Circuit in
`
`Ultramercz'al reaffirrned the framework used by the Board to analyze the ’350
`
`claims under section 101. Ultramercial confirmed that the Board correctly began
`
`its analysis with the statute. Final Decision 25; VX 2106, p. 4 (“The statute
`
`controls the inquiry into patentable subject matter”). Likewise, the Board properly
`
`applied Supreme Court guidance that an abstract idea is not patentable, but an
`
`application of the abstract idea may be. Final Decision, pp. 25-26 (citing Mayo v.
`
`Prometheus, 132 S. Ct. 1289 (2012), Gottschalk v. Benson, 409 US. 63 (1972),
`
`Diamond v. Diehr, 450 US. 175 (1981), Bilski v. Kappos, 130 S. Ct. 3218 (2010));
`
`VX 2106, p. 6 (Citing Mayo, Benson, Diehr, Bilskz'). And Ultramercz'al
`
`demonstrated that the Board answered the right question on the ’350 claims:
`
`“whether they incorporate sufficient meaningful limitations to ensure that the
`
`claims are more than just an abstract idea .
`
`.
`
`. .” Final Decision 26; VX 2106, p. 6
`
`(“[T]he relevant inquiry is whether a claim, as a whole, includes meaningful
`
`
`
`limitations restricting it to an application, rather than merely an abstract idea”).2
`
`2.
`
`The Board was correct that the ’350 claims cover an
`
`abstract idea—determining a price using organizational and
`product group hierarchies—and the Ultramercial decision did
`nothing to change this conclusion
`
`The Board correctly found that determining a price, as recited in all of the
`
`challenged claims, is “essentially a method of calculating,” Final Decision 28—29,
`
`which has long been ruled an unpatentable abstract idea. See, e.g., Parker v. Flook,
`
`437 US. 584, 594-95 (1978); Diehr, 450 US at 186-87. Ultramercz'al did not
`
`involve claims using a mathematical algorithm, VX 2106, p. 12, and it did not
`
`change the longstanding rule that calculations are unpatentable abstract ideas. See
`
`VX 2106, pp. 8, 9.
`
`The Board was also correct that the concept of organizational hierarchies for
`
`products and customers is an abstract “‘disembodied concept,’ a basic building
`
`block of human ingenuity” that cannot be patented. Final Decision, pp. 28, 29. The
`
`prohibition on patenting abstract intellectual concepts is well-settled, see, eg,
`
`Benson, 409 US. at 67, as the Ultramercial court recognized, VX 2106, p. 4 (“The
`
`Court’s motivation for recognizing exceptions to this broad statutory grant was its
`
`desire to prevent the ‘monopolization’ of the ‘basic tools of scientific and
`
`
`
`2 The Board also properly considered the claims as a whole, including the steps of
`storing, retrieving, sorting, eliminating, and determining. See Final Decision 31—33.
`In particular, the Board considered the claim language itself and testimony from
`SAP’s expert and Versata’s witness regarding each of these steps. Id.
`
`3
`
`
`
`technological work’ .
`
`.
`
`. .”).
`
`The Board’s conclusion that the ’350 claims are abstract is bolstered by the
`
`fact that the process could be performed via pen and paper, Final Decision 29, and
`
`is unaffected by Ultramercz‘al. The Board based its conclusion in part on testimony
`
`by Versata’s expert that “confirmed that the process steps could be performed by
`
`pen and paper.” Final Decision, p. 29 (citing Liebich Transcript, Ex. 1033, 119:4—
`
`143210, Ex. 1029, Ex. 1031). Ultramercial did not involve claims to mental steps
`
`that could be performed with pen and paper, and the Ultramercz'al Court expressly
`
`distinguished its holding from earlier cases holding that “methods which can be
`
`performed mentally, or which are the equivalent of human mental work, are
`
`unpatentable abstract ideas.” VX 2106, p. 12; see CyberSource Corp. v. Retail
`
`Decisions, Inc, 654 F.3d 1366, 1371-73 (Fed. Cir. 2011).
`
`Versata also suggests that the challenged claims are patentable because they
`
`are directed to not one, but two, abstract ideas. Rehearing Request, p. 12, n. 8. No
`
`matter how their abstract foundation is characterized, the claims would remain
`
`unpatentable. Patent eligibility is not about the number of abstract ideas recited,
`
`but “whether the claim contains limitations that meaningfully tie that abstract idea
`
`to an actual application of that idea through meaningful limitations.” VX 2106,
`
`p. 7. Breaking the abstract idea into the two concepts of “organizational hierarchies
`
`for products and customers” and “determining a price” would not meaningfully
`
`
`
`limit the claims to a patentable application. Instead, additional steps that “merely
`
`separately restate[] an element of the abstract idea” do not limit the abstract
`
`concept to a practical application. VX 2106, p. 9.
`
`Moreover, Versata’s contention that no precedent exists where claims with
`
`multiple abstract ideas were found unpatentable is incorrect. For example, the
`
`Supreme Court in Bilski v. Kappos rejected claims that covered “both the concept
`
`of hedging risk and the application of that concept to energy markets,” explaining
`
`that “petitioners’ claims are not patentable processes because they are attempts to
`
`patent abstract ideas.” Bilski, 130 S. Ct. at 3229—30. The Court also rejected
`
`dependent claims that added more abstract ideas, such as statistical tests, to the
`
`abstract concept of hedging risk. Id. at 3231.
`
`3.
`The Board’s conclusion that the claims are not drawn to a
`patentable application of the underlying abstract idea remains
`correct after Ultramercial
`
`The use of an unspecified computer did not make the ’350 claims patentable
`
`before or after Ultramercial. As the Board properly noted, “claims do not become
`
`patentable under section 101 simply for reciting a computer.” Final Decision,p. 29
`
`(citing Benson, 409 US. at 68). This was reaffirmed by the Federal Circuit in
`
`Ultramercz’al: “the mere reference to a general purpose computer will not save a
`
`method claim from being deemed too abstract to be patent eligible.” VX 2106,
`
`p. 9.
`
`
`
`The Board’s conclusion that the ’350 claims require only unspecified
`
`computers is sound and consistent with Ultramercial. The Board found that
`
`the ’350 claims do not require a “specific” computer, based on expert testimony
`
`and the patent’s explanation that the purported invention “may be implemented in
`
`any type of computer system or programming or processing environment.” Final
`
`Decision, p. 30 (citing, Exh. 1001, 5:55-58, Siegel Dep. Tr. Ex. 2090, 107212-19).
`
`Versata’s argument that its claims contain significant computer hardware
`
`limitations, Rehearing Request, pp. l3, 14, is belied by the record. As the Board
`
`noted, “while Versata contends that its invention provides technological benefits
`
`for database tables and queries, its claims do not require the use of a database.”
`
`Final Decision, p. 33, n. 21.
`
`The Board was also correct that the ’350 claims do not recite “specific” steps
`
`that meaningfully limit the use of an abstract idea, noting Versata’s admission that
`
`the ’350 claims “cover the ‘capability’ to execute a pricing procedure using
`
`hierarchical accesses to hierarchical arrangements of customer .
`
`.
`
`. and product .
`
`.
`
`.
`
`data.” Final Decision, pp. 32—33 (quoting Versata Federal Circuit Appeal Brief,
`
`Ex. 1011, 11). Claims that recite only the “idea of doing that thing on a computer”
`
`were specifically called out as being problematic in Ultramercial. VX 2106, p. 9.
`
`And, of course, Ultramercial did not change the Supreme Court case law relied
`
`upon by the Board in support of its conclusion that any computers involved in
`
`
`
`the ’350 claims were insufficient to make the claims patentable under section 101.
`
`See, e.g., Final Decision, pp. 26, 27, 29, and 30.
`
`The Board also correctly concluded that the addition of routine, conventional
`
`steps that are “implicit in the abstract idea itself" did not make the ’350 claims
`
`patentable. Final Decision, pp. 31-33. The Board’s conclusion rested on expert
`
`testimony that the claims involved only routine and conventional subject matter
`
`and abstract ideas. Final Decision, pp. 31-32 (e. g, Dr. Siegel, Ex. 1005, 11 49). The
`
`Board also considered, but rejected, testimony from Versata’s expert that the steps
`
`of “storing, retrieving, sorting, eliminating and determining” provided meaningful
`
`limitations. Final Decision 31-32. Instead, the Board correctly concluded that these
`
`were no more than conventional, routine steps to implement the abstract price
`
`calculation, and that even an “improved” method of calculating is still an
`
`unpatentable abstract idea. Final Decision, pp. 31-32 (citing Flook, 437 US.
`
`at 594—95).3
`
`Ultramercial supports the Board’s conclusion that these routine and
`
`conventional steps, implicit in the abstract idea itself, do not convey patentability.
`
`Specifically, the Federal Circuit explained that if a step is “a routine and
`
`
`
`3 Contrary to Versata’s allegations, Rehearing Request 13-14, when analyzing the
`added subject matter, the Board carefully distinguished the section 101 analysis
`from the issues of novelty and obviousness under §§ 102 and 103, Final
`Decision 32, an analysis that was again endorsed in Ultramercial, VX 2106, p. 9
`(citing Mayo).
`
`
`
`conventional aspect of the abstract idea, then the step merely separately restates an
`
`element of the abstract idea, and thus does not further limit the abstract concept to
`
`a practical application.” VX 2106, p. 9 (citing Mayo, 132 S. Ct. at 1298).
`
`Several other factors distinguish the Board’s final decision
`4.
`from the district court decision reversed in Ultramercial
`
`The invention in Ultramercial represented an advance
`a)
`in computer technology, unlike the ’350 patent
`
`The Ultramercial invention solved a problem created by the use of
`
`computers and the Internet: the ease of distributing digital copyrighted content and
`
`the declining effectiveness of Internet advertising such as banner ads. VX 2106,
`
`p. 10. Its solution was likewise computer-based: offering content for sale on the
`
`Internet using “several computer systems, operating in tandem, over a
`
`communications network,” VX 2106, p. 11, and restricting access to the online
`
`content through “complex computer programming,” id. The claims included
`
`several “specific steps,” almost all of which “plainly require that the method be
`
`performed through computers, on the internet, and in a cyber—market environment”
`
`and required a “controlled interaction with a consumer over an Internet website,
`
`something far removed from purely mental steps.” VX 2106, pp. 11, 12 (emphasis
`
`omitted).
`
`In contrast, the ’350 patent “makes clear that its contribution to the arts lies
`
`not in the type of computing device or processing environment employed.” Final
`
`
`
`Decision, p. 30. The purported invention of the ’350 patent is “to improve upon the
`
`prior art and reduce the need for large tables of data by arranging customers into a
`
`hierarchy of customer groups and products into a hierarchy of product groups.”
`
`Final Decision, p. 5 (citing ’350 patent, Exh. 1001, 3:24—27, 41-42). Indeed,
`
`Versata has admitted that the ’350 claims cover the “capability” of calculating
`
`prices using hierarchical arrangements of customer and product data. Final
`
`Decision, p. 33.
`
`Unlike computerized inventions found patentable for involving “complex
`
`computer programming” that ties the claims to a particular computer
`
`implementation, Ultramerz'cal, VX 2106, p. 11, or “functional and palpable
`
`applications in the field of computer technology,” Research Corp. Techs. v.
`
`Microsoft Corp, 627 F.3d 859, 868 (Fed. Cir. 2010), or “a combination of
`
`interrelated elements which combine to form a machine for converting discrete
`
`waveform data samples,” In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994),
`
`the ’350 claims are akin to those found unpatentable because they “do no more
`
`than merely recite the use of a computer for its ordinary functions of performing
`
`repetitive calculations, storing data, or automating routine tasks .
`
`.
`
`. .” Bancorp,
`
`687 F.3d at 1278—79; see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
`
`(Fed. Cir. 2012); CyberSource, 654 F.3d at 1370, Petitioners’ Reply, pp. 7-10.
`
`
`
`The Board’s decision on the ’350 patent is based on
`b)
`factual evidence and claim constructions that the district
`
`court lacked in Ultramercial
`
`A proper analysis of patentability under section 101 can involve factual
`
`considerations, such as determining whether a patent embraces an abstract idea or
`
`whether something was “conventional” or “routine.” VX 2106, p. 3. The Federal
`
`Circuit noted that factual testimony was missing in Ultramercial because the case
`
`was dismissed under Rule 12(b)(6). Id. The Board’s decision, on the other hand,
`
`benefits from the testimony of both Dr. Siegel and Mr. Liebich regarding issues
`
`relevant to the § 101 inquiry, including the relationship of computers to the claims,
`
`Final Decision, pp. 29, 30, and the routine, conventional steps recited in the claims,
`
`id. at 31—33.
`
`In addition, “claim construction normally will be required” when
`
`considering patentability under section 101, VX 2106, p. 3. No formal claim
`
`construction was done by the district court in Ultramercial before dismissing the
`
`case for failure to claim statutory subject matter, a deficiency noted by the Federal
`
`Circuit. VX 2106, p. 3. Unlike the district court in Ultramercial, the Board
`
`construed the claims of the ’350 patent after briefing by the parties and expert
`
`testimony. Final Decision, pp. 19—24.
`
`The Board’s decision also involved different legal
`c)
`standards than the district court in Ultramercial
`
`The Court in Ultramercz’al noted that the district court was bound to apply a
`
`10
`
`
`
`presumption of “proper issuance” to the Ultramercial patent, with the
`
`accompanying burden of proving invalidity by clear and convincing evidence.
`
`VX 2106, p. 5. This does not apply to the Board’s review of the ’350 patent, where
`
`the petitioner’s burden is to prove unpatentability by the lower “preponderance of
`
`the evidence” standard, 35 U.S.C. § 326(e), and the presumption of validity does
`
`not apply, Fed Reg. Vol. 77, No. 157, p. 48697. See also Final Decision, p. 7, n4.
`
`The Court explained that district courts apply the presumption of validity to the
`
`issue of patent eligibility because the patent office, when issuing the patent, has
`
`“assesse[d] and endorse[d] its eligibility under § 101.” VX 2106, p. 5. Here, rather
`
`than “endorsing” eligibility, the Board has found, correctly, that the ’350 claims are
`
`unpatentable and cancelled. Final Decision, p. 34.
`
`The Federal Circuit’s decision in Versata Software Inc. v.
`B.
`SAP America Inc., 106 USPQ2d 1649 (Fed. Cir. 2013) has no effect
`on the PGR proceeding
`
`In the Request for Rehearing, Versata alleges that “the Board
`
`misapprehended or overlooked the effect of the Federal Circuit’s affirmance of the
`
`district court’s judgment dated May 1, 2013” and that “[t]he Federal Circuit’s
`
`affirmance further supports the fact that both claim and issue preclusion bar SAP’s
`
`untimely, collateral attack on the claims of the ’350 patent.” Rehearing Request,
`
`pp. 4, 5. Both statements are incorrect. The Board has properly considered the
`
`effect of the ongoing appeal and the Federal Circuit’s decision, as evidenced in,
`
`11
`
`
`
`e.g., its Initial Determination (Dkt. No. 36) and subsequent communications with
`
`the parties. The Federal Circuit’s decision does not affect this proceeding with
`
`respect to claim and issue preclusion or any other issue presented to the Board.
`
`1.
`
`The Federal Circuit appeal remains active
`
`In the pending appeal to the Federal Circuit, there is no final judgment
`
`binding the parties or this Board. See, e.g., Fresenius USA, Inc. et al. v. Baxter
`
`International, No. 2012-1334, -1335, Slip op. at 20 (Fed. Cir. July 2, 2013)
`
`(SX 1039). The appeal is still active, and the May 1 decision—like the judgment of
`
`the district court—is not final. The Board previously explained that claim and issue
`
`preclusion could not apply here without a final judgment, Initial Decision,
`
`pp. 18-20, and this has not changed. Versata does not point to any purported flaw
`
`in the Board’s reasoning, and offers no explanation why reconsideration of its
`
`claim and issue preclusion arguments is appropriate now. See, e.g., VX 2102.
`
`Indeed, the Request for Rehearing never asserts or explains why Versata
`
`believes there is a final judgment to begin with, let alone why issue or claim
`
`preclusion could apply to a proceeding with, inter alia, a different standard of
`
`proof and claim construction. The Federal Circuit may still reverse or otherwise
`
`amend its May 1 decision. SAP requested rehearing and/or rehearing en banc on
`
`May 31, 2013, and this request is currently under consideration by the Federal
`
`Circuit, which recently asked Versata to respond to SAP’s request. SK 1037. No
`
`12
`
`
`
`mandate has issued, and no mandate could issue until at least seven days after
`
`SAP’s rehearing request is decided and, if granted, until rehearing is completed.
`
`Fed. R. App. P. 41. In sum, the appeal remains active, and the Federal Circuit’s
`
`May l decision has no effect on this proceeding. See, e.g., Vardon Golf Co, Inc. v.
`
`Karsten Mfg. Corp, 294 F.3d 1330, 1333 (Fed. Cir. 2002) (citing Miller Brewing
`
`Co. v. J05. Schlitz Brewing C0., 605 F.2d 990, 996 (7th Cir. 1979). See also Initial
`
`Decision, p. 19.
`
`2.
`
`Even if the Federal Circuit mandate were to issue based on
`
`the May 1 opinion, there would be no final judgment in the
`litigation
`
`Even if a mandate were to issue based on the May 1 opinion, the district
`
`court’s judgment would not be final and would, inter alia, remain subject to
`
`reversal or amendment. As the Federal Circuit has recently confirmed, “it is well—
`
`established that where the scope of relief remains to be determined, there is no
`
`final judgment binding the parties (or the court).” SX 1039, p. 20. Even if
`
`unaltered, the Federal Circuit’s May 1 opinion leaves issues that the District Court
`
`must address, including a remand regarding the original injunction. SX 1038,
`
`pp. 23, 24. On remand, the District Court would have the opportunity to consider
`
`and act upon the situation then presented. See, e. g, Barrow v. Falck, 11 F.3d 729,
`
`731 (7th Cir. 1993) (“An appellate mandate does not turn a district judge into a
`
`robot, mechanically carrying out orders that become inappropriate in light of
`
`13
`
`
`
`subsequent factual discoveries or changes in the law.”). Thus, following a mandate
`
`the judgment would remain non-final, and appeals would be available from any
`
`judgment made by the district court on remand, returning the case once again to the
`
`Federal Circuit.
`
`3.
`
`Versata waived any claim and issue preclusion defense
`
`The finality of the District Court judgment has not changed since Versata
`
`raised (and the Board rejected) these arguments in its Preliminary Response.
`
`Because Versata did not raise issue or claim preclusion in the patent owner
`
`response, they are waived, as Versata has acknowledged:
`
`HON. TIERNEY: Stop. Let me -— that raises an issue.
`Let me clarify. Mr. Zoltick, I don't know if you had
`thought this through, but if an issue was raised in the
`preliminary response then [not] carried into the patent
`owner's response, we consider it waived. Is that your
`understanding also, or do you believe that actually
`carried through?
`MR. ZOLTICK: We raise[d] the issues that we intended
`to have in this trial in the patent order [sic] response.
`
`VX2098: 8213-921.
`
`Petitioner and the Board relied upon Versata’s waiver in addressing
`
`Petitioner’s motion for additional pages in the Petitioner’s Response. VX2098:
`
`9: 12-18 (“You don't need extra pages if you take into account things that were
`
`previously raised and not carried through and raised in this patent owner's
`
`response”) The Federal Circuit’s May 1 decision did not make the judgment final
`
`14
`
`
`
`or otherwise alter the basis for Versata’s previously—asserted position, and Versata
`
`has presented no arguments that it does. Supra at Section III(B)(1). Thus, Versata’s
`
`choice not to pursue such arguments in its Patent Owner Response has waived
`
`them, and leaves nothing for the Board to reconsider on rehearing.
`
`IV.
`
`CONCLUSION
`
`For the reasons set forth above, Versata’s Request for Rehearing should be
`
`denied.
`
`Respectfully submitted,
`
`Dated: July 18, 2013
`
`i g
`11
`By:
`“Erika H. Amer, Lead Counsel
`
`Joseph E. Palys
`Michael V. Young, Sr.
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER,
`L.L.P.
`
`11955 Freedom Drive
`
`Reston, VA 20190
`Phone: 571-203—2700
`
`Facsimile: 202—408-4400
`
`J. Steven Baughman, Back-up Counsel
`ROPES & GRAY L.L.P
`
`Prudential Tower
`
`800 Boylston Street
`Boston, Massachusetts 02199
`Phone: 202—508-4606
`
`Facsimile: 617-235-9492
`
`Attorneys for Petitioners SAP America,
`Inc. and SAP A G
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER'S
`
`OPPOSITION TO PATENT OWNER'S REQUEST FOR REHEARING was
`
`served on July 18, 2013, to Nancy J. Linck and Martin M. Zoltick, Lead and Back-
`
`up Counsel for Versata, respectively, at the service e-mail address of
`
`VERSATA-PGR@rfem.com provided in Versata's Mandatory Notices. The
`
`parties have agreed to electronic service.
`
`rsmg
`Legal As 1stant
`FINNE AN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, L.L.P.
`
`16
`
`
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