UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SAP AMERICA, INC. ET AL.
`Petitioner
`v.
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`Patent of VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
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`_______________
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`Case CBM2012-00001
`Patent 6,553,350
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`_______________
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`OPPOSITION TO MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SAP AMERICA, INC. ET AL.
`Petitioner
`v.
`
`Patent of VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`_______________
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`_______________
`
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`OPPOSITION TO MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`The Board should deny Petitioner’s motion to expunge Versata Exhibits
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`(“VX”) 2045, 2046, 2047 and 2086 from the record because Petitioner’s motion
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`did not identify any confidential information that would cause harm to Petitioner if
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`made public (let alone assert that each of the entire documents Petitioner seeks to
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`expunge from the record is confidential). Additionally, all of these exhibits were
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`relied on by Versata and at least one of the exhibits was relied on by the Board in
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`its institution decision. Accordingly, Petitioner’s motion should be denied.1
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`II. REASONS FOR THE RELIEF REQUESTED
`Petitioner’s motion to expunge seeks to misuse 37 C.F.R. § 42.56 as a sword
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`to expunge four entire documents from the record before the Board – documents
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`on which Versata relied in its Patent Owner Preliminary Response (Paper 29)
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`and/or its Patent Owner Response (Paper 52), presumably because Petitioner wants
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`to argue that this should prevent Patent Owner Versata from relying on these
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`exhibits on appeal.
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`37 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial
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`or after judgment in a trial, a party may file a motion to expunge confidential
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`information [not entire documents] from the record.” The Office Patent Trial
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`1 With respect to Petitioner’s alternative requested relief of filing redacted
`documents, neither the Board nor Versata is in a position to assess Petitioner’s
`request since Petitioner did not identify what purported confidential information
`Petitioner would redact from these exhibits.
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`1
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`Practice Guide (the “Practice Guide”) explains that the rule was intended to be
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`used as a shield, not a sword, to protect parties disclosing confidential information
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`from having such information made part of the public record. 77 Fed. Reg. 48761.
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`If, 45 days after denial of a petition to institute a trial or 45 days after final
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`judgment in a trial, confidential information is not expunged, such information
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`becomes part of the public record. Id. (“The rule balances the needs of the parties
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`to submit confidential information with the public interest in maintaining a
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`complete and understandable file history for public notice purposes.”). See also 37
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`C.F.R. § 42.14 (“The record of a proceeding, including documents and things, shall
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`be made available to the public, except as otherwise ordered … ”).
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`Rule 42.56 does not recite any standards for evaluating motions to expunge;
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`however, several sources provide insight. The Practice Guide, for example,
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`provides that there is a particular expectation that information will be made public
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`where the existence of the information is referred to in a decision to grant or deny a
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`request to institute a review or is identified in a final written decision following a
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`trial. 77 Fed. Reg. 48761. The Practice Guide also states that “[t]he rule
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`encourages parties to redact sensitive information, where possible, rather than
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`seeking to seal entire documents.” Id.
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`The Rules of Practice shed further light via the rule-making history. For
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`example, it is clear that the default should not be to grant a motion to expunge
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`2
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`because a proposal that “petitions to expunge should be granted in all but
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`extraordinary circumstances,” was rejected. 77 Fed. Reg. 48644. A proposal that
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`submitted information remain confidential was similarly rejected. Id.
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`MPEP § 724.05 (Petition to Expunge Information or Copy of Papers in
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`Application File) also sheds light on the evaluation of a motion to expunge under
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`Rule 42.56, by analogy. MPEP § 724.05 concerns the evaluation of petitions to
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`expunge under 37 C.F.R. § 1.59 (“[e]xpungement of information or copy of papers
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`in application file”), which is similar to Rule 42.56 but concerns petitions to
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`expunge information in application files rather than post-grant review exhibits.
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`MPEP § 724.05(I) provides the requirements for such a petition. The requirements
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`include, inter alia, “a clear identification of the information to be expunged
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`without disclosure of the details thereof” and “a clear statement that the
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`information to be expunged is trade secret material, proprietary material, and/or
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`subject to a protective order, and that the information has not been otherwise made
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`public.” MPEP § 724.05(I).
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`Keeping the above policies in mind, and balancing the interests of the parties
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`and the public, for the reasons set forth below Petitioner’s motion to expunge
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`should be denied.
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`3
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`A. The Exhibits at Issue Should Not be Expunged in Their Entirety
`Petitioner’s motion to expunge Versata Exhibits 2045, 2046, 2047 and 2086
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`in their entirety should be denied. Rule 42.56 does not provide for the
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`expungement of confidential documents or exhibits. It provides only for the
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`expungement of confidential information. Petitioner has failed to identify any
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`information it purports to be confidential. Compare 37 C.F.R. § 42.56
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`(“[e]xpungement of confidential information”) with 37 C.F.R. § 1.59
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`(“[e]xpungement of information or copy of papers in application file”).
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`Also, SAP might argue that if Versata Exhibits 2045, 2045, 2047 and 2086
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`are expunged in their entirety, then Versata should not be able to cite these exhibits
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`on appeal. The law provides that this is not the case; the entire record, including
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`all exhibits, should be available for the Federal Circuit to consider on appeal. See,
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`e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1547 (Fed. Cir.
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`1983) (“careful, time-consuming study of all exhibits and each page of the [2000
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`page] record has been required”); Glossip v. Trammell, No. 10-6244, 2013 U.S.
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`App. LEXIS 15290, at *106 (10th Cir. July 25, 2013) (“[t]his court has reviewed
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`the entire seventeen-volume trial transcript, along with all exhibits admitted at trial
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`and those Glossip asserts should have been adduced at trial”) (see Exhibit 2107);
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`U.S. v. Huckaby, 698 F.2d 915, 921 (8th Cir. 1982) (“[a]fter carefully reviewing
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`the record, including the trial transcript and all exhibits, we affirm the judgment”);
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`4
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`U.S. v. Morris, No. 90-1080, 1992 U.S. App. LEXIS 12266, at *2 (7th Cir. June 3,
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`1992) (“[c]ounsel is obligated to ensure that all exhibits to which he refers in his
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`brief are actually part of the appellate record”) (see Exhibit 2108); Luckie v.
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`Immigration and Naturalization Servs., 802 F.2d 458, at *2 (6th Cir. 1986)
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`(“[u]pon a review of the complete record, including the transcript of the hearing
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`and all exhibits introduced at the hearing, we conclude that there were no
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`violations of petitioners’ due process rights in these proceedings”); U.S. v. Puff,
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`211 F.2d 171, 187 (2nd Cir. 1954) (“We have considered not only the claimed
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`grounds of error but also have closely scrutinized the entire record from cover to
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`cover- the proceedings in the selection of the jury, the opening statements of
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`counsel, the trial transcript and all exhibits referred to in argument or brief, the
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`Judge’s rulings on requests to charge, the summations of counsel and the Judge’s
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`charge.”).
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`Further, the public has a very strong interest in any exhibits that the Board
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`has relied on becoming part of the public record. See 77 Fed. Reg. 48761. See
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`Institution Decision (Paper 36) at 33.
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`Petitioner’s Proposed Alternative Relief of Redacting Exhibits
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`B.
`With regard to the alternative relief requested in Petitioner’s motion, as indicated
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`above, Petitioner did not identify what purported confidential information Petitioner
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`5
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`would redact from these exhibits. Thus, neither the Board nor Versata is in a position to
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`assess Petitioner’s request.
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`Versata notes that, with regard to VX 2045 and VX 2046, the parts of these
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`exhibits relied on by Versata in its Patent Owner Versata’s Preliminary Response (Paper
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`29 at 27-28 and 48-49) and Patent Owner Versata’s Response (Paper 52 at 64) concern
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`non-confidential claim construction positions. Thus, only these non-confidential portions
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`need to remain part of the public record. So long as the information relied on by Versata
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`in its Patent Owner’s Preliminary Response and Patent Owner Response is not included
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`in SAP’s proposed redactions, Versata would not oppose Petitioner redacting the other
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`portions of VX 2045 and 2046.
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`With regard to VX 2047, Versata is not aware of any information in VX
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`2047 that could be considered confidential. Indeed, it appears that the only reason
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`why this exhibit was filed under seal in the first place is because the full transcript
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`was designated as confidential. However, VX 2047 does not comprise the full
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`transcript; VX 2047 only comprises nine pages excerpted from the transcript, and
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`none of these nine pages should, as far as Versata is aware, be considered
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`confidential.
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`VX 2047 should not be redacted for the additional reason that the Board
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`relied on this exhibit in its Institution Decision, and thus, the information relied on
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`by the Board falls under the following language from the Practice Guide:
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`6
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`There is an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant or deny a
`request to institute a review or is identified in a final written decision
`following a trial.
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`77 Fed. Reg. 48761. Specifically, the information relied on in the Board’s
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`Institution Decision is the testimony from Dr. Boyd regarding his opinion that
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`SAP’s R/3 2.2 did not use denormalized numbers. VX 2047, Videotaped
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`Deposition of Dr. E. Andrew Boyd, at 33. Versata also relied on VX 2047, at
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`pages 118-121, for Dr. Boyd’s testimony that a person of ordinary skill in the art at
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`the time the ‘350 patent was filed would need to have a technical background. VX
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`2047 at 118:11-12 (“I do believe that for some particular issues there is some need
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`for a technical background”). For the foregoing reasons, VX 2047 should not be
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`redacted or expunged from the record. All nine pages of the exhibit appear to be
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`non-confidential, and four of the nine pages were expressly cited by the Board or
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`Versata.
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`Finally, with regard to VX 2086, Petitioner has identified (previously in this
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`proceeding, not in its motion to expunge) precisely what information in VX 2086
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`Petitioner contends is confidential. A duplicate copy of the transcript marked VX
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`2086 has been marked in this case as VX 2090, except that VX 2090 has the
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`confidential information redacted and the exhibit is public, whereas VX 2086 is not
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`redacted and is marked confidential under the Protective Order. Because of this
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`duplication, the public’s interest—as set forth in 37 C.F.R. § 42.14 (“[t]he record
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`of a proceeding, including documents and things, shall be made available to the
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`public, except as otherwise ordered”) and 77 Fed. Reg. 48761(“[t]he rule
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`encourages parties to redact sensitive information, where possible, rather than
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`seeking to seal entire documents”)—has already been satisfied. Thus, VX 2086
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`should remain in the record under seal.
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`III. CONCLUSION
`For at least the reasons set forth above, the Board should deny Petitioner’s
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`motion to expunge VX 2045, 2046, 2047 and 2086 in their entireties.
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`Date: August 23, 2013
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`Respectfully submitted,
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`By:
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` /s/Nancy J. Linck
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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
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`Attorneys for Patent Owner
`Versata Development Group, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of August, 2013, a true and correct
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`copy of the foregoing OPPOSITION TO MOTION TO EXPUNGE UNDER 37
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`C.F.R. § 42.56 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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`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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