Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`SAP AMERICA INC. AND SAP AG,
`Petitioners,
`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.
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`PETITIONER’S REPLY IN SUPPORT OF
`MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56
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`Attorney Docket No. 09449.0025-00000
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`SAP AMERICA INC. AND SAP AG,
`Petitioners,
`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 REPLY IN SUPPORT OF
`MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
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`Pursuant to 37 C.F.R. § 42.56, SAP requests that the Board expunge Versata
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`Exhibits 2045-2047 and 2086 from the record or that the exhibits otherwise remain
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`under seal until completion of any subsequent appeals, for at least the reasons
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`discussed below.
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`II. REASONS FOR THE RELIEF REQUESTED
`SAP filed its Motion to Expunge Exhibits 2045-2047 and 2086 in the
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`manner outlined by both Rule 42.56 and the Trial Practice Guide. (Paper No. 76;
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`See, e.g., 77 Fed. Reg. 48756, 48761). As explained in SAP’s motion and below,
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`these exhibits contain confidential information protected under the Protective
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`Order. Rule 42.56 anticipates the expungement of entire sealed documents in favor
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`of redacted, non-confidential copies in the record, as evidenced by the Default
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`Protective Order of the Practice Trial Guide.1 For example, Section 4(A)(ii) of the
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`Default Protective Order—which mirrors Section 6(A)(ii) of the parties’ agreed-
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`upon Protective Order in this proceeding—requires “the submitting party shall file
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`confidential and nonconfidential versions of its submission, together with a Motion
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`to Seal the confidential version….” (Exhibit 2004, p. 12.) Thus, Rule 42.56
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`ensures that publicly accessible, nonconfidential versions of sealed documents will
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`1 Indeed, it remains unclear how the Board would expunge only portions of
`documents/exhibits from the record as suggested by Versata.
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`1
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`ensures that publicly accessible, nonconfidential versions of sealed documents will
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`Case No. CBM2012-00001
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`Attorney Docket No. 09449.0025-00000
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`provide a complete and understandable file history for public notice purposes in
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`the event the sealed documents later become expunged. Versata, however,
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`proposes that “Rule 42.56 does not provide for the expungement of confidential
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`documents or exhibits” but that the rule “provides only for the expungement of
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`confidential information.” (Paper No. 77, 4-5 (emphasis original).) This is
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`because Versata did not to provide nonconfidential versions of its submissions
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`along with its motions to seal, as required by the Protective Order. Nonetheless,
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`SAP would not oppose a late submission of redacted copies for the public record.
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`Absent that option, confidential Exhibits 2045-2047 and 2086 should be expunged,
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`whether now or upon completion of all appeals, for the following reasons.
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`A.
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`Exhibits 2045-2047
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`Exhibits 2045-2047 originated from the district court action involving the
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`’350 patent. Each Exhibit was designated under the district court’s Protective
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`Order as either “CONFIDENTIAL-OUTSIDE ATTORNEYS EYES ONLY” or
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`“HIGHLY CONFIDENTIAL-ATTORNEYS EYES ONLY.” These documents
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`were thus similarly designated under the Protective Order in this proceeding as
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`“Confidential-Attorneys’ Eyes Only Material.”
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`In its Opposition, Versata suggests that it is unaware of the confidential
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`portions of the sealed exhibits. (Paper No. 77, p. 4-6.) SAP, however, provided
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`2
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`redacted copies of both Exhibit 2045 and 2046 to Versata on September 16, 2012.
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`Case No. CBM2012-00001
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`Attorney Docket No. 09449.0025-00000
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`(See SAP Exhibit List, Served Documents 4 and 2, respectively.) Versata
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`nevertheless chose to file only confidential versions of those documents with its
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`Preliminary Response, despite not relying on any portion of the documents
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`indicated by SAP to be confidential. Only after filing the confidential documents
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`did Versata ask whether they should retain their confidential designation, which
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`SAP confirmed. Versata should not now be permitted to stand in opposition to
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`SAP’s effort to keep those confidential documents from becoming public.
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`As pointed out in SAP’s motion to expunge, the Board did not refer to
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`Exhibit 2045 in any decision. And the Board provided public access to the
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`information referred to in Exhibit 2046 by quoting the only relied upon portion of
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`the document in its Decision to Institute. (Paper No. 36, p. 40.) Moreover, the
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`Board referenced only twelve lines of deposition testimony from Exhibit 2047 in
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`its Decision to Institute in finding that SAP’s expert in the related district court
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`litigation testified that SAP’s R/3 2.2 system did not use denormalized numbers.
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`(Paper No. 36, pp. 39.) “[I]f any sealed exhibit contains no information
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`substantively relied on by the Board in the final decision, then that exhibit will be
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`expunged from the record by an Order of the Board.” (IPR 2013-00258, Paper 28,
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`p. 7.)
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`SAP therefore submits that expunging Exhibits 2045-2047 from the record
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`3
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`will not hamper the public interest of maintaining a complete and understandable
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`Case No. CBM2012-00001
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`Attorney Docket No. 09449.0025-00000
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`file history for public notice purposes. Accordingly, SAP requests these documents
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`be removed from the record, either at this stage or upon completion of all appeals.
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`B.
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`Exhibit 2086
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`Versata states that Exhibit 2086 should remain in the record under seal
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`because this version of Dr. Siegel’s deposition transcript, mistakenly filed by
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`Versata with its Patent Owner Response and only later sealed, also exists in the
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`record as a redacted, non-confidential document (Exhibit 2090). Versata’s position
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`is untenable, however, given the intended effect of Rule 42.56 and the fact that the
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`confidential portions of Exhibit 2086 were never relied upon by the parties or the
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`Board. Thus, Exhibit 2090 provides a complete and understandable file history for
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`public notice purposes, as anticipated by Rule 42.56, and Exhibit 2086 should be
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`expunged from the record, either at this stage or upon completion of all appeals.
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`III. CONCLUSION
`For the reasons set forth above, SAP’s Motion to Expunge under 37 C.F.R.
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`§ 42.56 should be granted.
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`4
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`Dated: September 9, 2013
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`Case No. CBM2012-00001
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`Attorney Docket No. 09449.0025-00000
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`Respectfully submitted,
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`By:
`Erika H. Arner, 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
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`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
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`Attorneys for Petitioners SAP America,
`Inc. and SAP AG
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`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing PETITIONER’S REPLY IN
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`SUPPORT OF MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56 was served
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`on September 9, 2013, to Nancy J. Linck and Martin M. Zoltick, Lead and Back-up
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`Counsel for Versata, respectively, at the service e-mail address of
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`VERSATA-PGR@rfem.com provided in Versata’s Mandatory Notices. The
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`parties have agreed to electronic service.
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`/Jacob T. Mersing/
`Jacob T. Mersing
`Legal Assistant
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, L.L.P.
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`6
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