Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
`
`Entered: October 17, 2012
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner,
`
`
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`____________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`____________
`
`Before MICHAEL P. TIERNEY, Lead Administrative Patent Judge, and SALLY
`C. MEDLEY and RAMA G. ELLURU, Administrative Patent Judges.
`
`TIERNEY, Lead Administrative Patent Judge.
`
`
`
`ORDER
`Setting Time for Filing Patent Owner Preliminary Response
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
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`
`
`571-272-7822
`
`
`
` Paper 10
`
`Entered: October 17, 2012
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner,
`
`
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner.
`____________
`
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`____________
`
`Before MICHAEL P. TIERNEY, Lead Administrative Patent Judge, and SALLY
`C. MEDLEY and RAMA G. ELLURU, Administrative Patent Judges.
`
`TIERNEY, Lead Administrative Patent Judge.
`
`
`
`ORDER
`Setting Time for Filing Patent Owner Preliminary Response
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`A conference call was held on October 16, 2012 at approximately 3:30 p.m.
`
`involving:
`
`
`
`
`
`
`
`
`
`
`Erika Arner and Michael B. Kiklis, counsel for SAP
`1.
`Nancy Link, counsel for Versata,
`2.
`Scott Cole, representing Versata in concurrent litigation,1
`3.
`4. Michael Tierney, Sally Medley and Rama Elluru, Administrative
`
`Patent Judges.
`
`SAP has filed a petition requesting that the Board institute a covered
`
`business method review for five (5) claims appearing in Versata’s U.S. patent
`
`6,553,350 (’350), claims 17 and 26-29. The petition seeks review of the patent
`
`under 35 U.S.C. §§ 101, 112, first and second paragraphs, and §102 as anticipated
`
`by “R/3 2.2 SAP System.” Petition, Paper 1.
`
`
`
`The Board requested the conference call to discuss three points: 1) the status
`
`of the concurrent litigation, 2) claim construction, and 3) the filing of a preliminary
`
`patent owner response. These items are discussed in detail below.
`
`
`
`
`1 Mr. Cole represents Versata in related litigation. Mr. Cole appeared
`before the Board during the conference call, but Mr. Cole is not a
`registered patent practitioner. Solely for the purposes of the call, the
`Board allowed Mr. Cole to make representations regarding the status
`of the related litigation with the understanding that Ms. Link was
`responsible for confirming these representations. Per the Order, Paper
`9, Versata should file a motion for pro hac vice admission should
`Versata desire Mr. Cole to appear before the Board on their behalf.
`
`
`
`2
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`
`
`I.
`
`Status of Concurrent Litigation
`
`Petitioner has identified the following two related proceedings as involving
`
`the ’350 patent:
`
`Versata Software, Inc. et al. v. SAP America, Inc. et al., Civil
`a.
`Action No. 2:07-cv-153, E.D.T.X. (terminated September 9, 2011);
`and
`Versata Software, Inc. et al. v. SAP America, Inc. et al., No.
`b.
`2012-1029, -1049, U.S. Court of Appeals for the Federal Circuit.
`
`Paper 3 at 2.
`
`
`
`Based upon the record filed to date and the representations made during the
`
`call, the Board is of the understanding that the district court litigation began in
`
`2007 alleging that SAP infringed claims 26, 28 and 29 of the ’350 patent, among
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`others. Paper 1 at 1. At some point during the litigation, issues relating to validity
`
`were raised and discovery taken, although only best mode appears to have been
`
`raised at a first trial. In a second trial before the district court, a jury found that
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`SAP infringed Versata’s ’350 patent and awarded damages. SX 1011, 4. The
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`district court upheld those awards and an appeal and cross-appeal were taken to the
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`Federal Circuit. Id. According to the parties, briefing before the Federal Circuit
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`for the appeals is closed. Further, the Board understands that neither party has
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`appealed the district court’s claim construction, a copy of which appears in the
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`record as SAP exhibit (SX) 1012.
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`
`
`
`
`
`
`3
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`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
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`II.
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`Claim Construction
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`
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`SAP’s petition states that it relies upon the broadest reasonable interpretation
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`as understood by one of ordinary skill in the art and consistent with the disclosure.
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`Paper 1 at 11. SAP however, identifies the following four claim terms that it
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`believes may be of particular interest in the proceeding:
`
`
`
`
`
`
`
`
`
`a.
`
`b.
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`c.
`
`d.
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`“sorting the pricing information”
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`“the pricing information that is less restrictive”
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`“pricing type(s)”
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`“pricing information”
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`Paper 1 at 11-12. According to SAP, its construction of the terms is consistent
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`with that of the district court with the exception of the term “the pricing
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`information that is less restrictive.” SAP states that this particular terminology is
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`insolubly ambiguous, however we note that SAP’s expert, Dr. Siegel, applied the
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`district court construction of the “less restrictive” terminology when comparing the
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`SAP prior art against the claims. SX 1005, ¶ 97.
`
`
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`SAP was asked during the conference call to identify how its claim
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`construction differed from that of district court, as no appeal was taken from the
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`court’s construction of the claims. SAP drew the Board’s attention to the allegedly
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`insolubly ambiguous terminology.
`
`
`
`4
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`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
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`Versata, like SAP, was asked during the conference call to state whether
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`they sought to adopt the district court’s claim construction in this proceeding.
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`Versata declined stating that they weren’t prepared to take a position on claim
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`construction at this time.
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`
`
`
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`
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`III. Patent Owner Preliminary Response
`
`Versata represented during the conference call that they intended to file a
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`preliminary response.
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`
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`The default time for filing a patent owner preliminary response is generally
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`three months. § 42.207(a). Times set by rule are default and may be modified by
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`order. § 42.5(c)(1). In setting a time for the patent owner preliminary response,
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`the Board takes into account the following facts.
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`
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`Versata and SAP have been litigating the ’350 patent for approximately five
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`years. Issues relating to validity were raised during the district court proceeding
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`and discovery taken, although only best mode appears to have been raised at trial.
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`The district court has entered judgment and, although both parties have appealed,
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`neither party sought to appeal the district court’s claim construction.
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`
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`SAP’s petition for covered business method review seeks to challenge only
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`five (5) claims and only on four specific grounds. Further, with the exception of
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`the “less restrictive” terminology, SAP’s petition does not identify with any
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`
`
`5
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`
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`Case CBM2012-00001
`Patent 6,553,350
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`specificity how the broadest reasonable interpretation of the claims differs from
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`that of the district court’s claim construction.
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`
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`Based upon the facts presented, the issues raised in the petition do not
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`appear to be overly complicated and neither party during the conference call
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`convinced us otherwise. Accordingly, based on the facts of this case, the Board
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`exercises its discretion and sets a date of two months from filing of the petition for
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`the patent owner preliminary response, i.e., November 16, 2012.
`
`
`
`PETITIONER:
`
`
`erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
`
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`
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`
`6
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`
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