Trials@uspto.gov
`571-272-7822
`
`
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` Paper 16
`
`Entered: November 1, 2012
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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
`
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 16
`
`Entered: November 1, 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
`
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
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`A conference call was held on October 31, 2012 at approximately 1:30 p.m.
`
`involving:
`
`Erika Arner and Joseph Palys, counsel for SAP
`1.
`Nancy Link and Martin Zoltick, counsel for Versata,
`2.
`3. Michael Tierney, Sally Medley and Rama Elluru, Administrative
`
`Patent Judges.
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`
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`The conference call covered a variety of topics including Versata’s request to
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`submit expert testimony with their patent owner preliminary response, request for
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`additional discovery and request to rely upon counsel and experts who were
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`involved in the related litigation.1 These requests as well as a Board request for
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`additional information are discussed in detail below.
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`I.
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`Versata’s Request
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`
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`a.
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`Versata Request to Submit Expert Testimony with its Patent
`Owner Preliminary Response
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`Versata requested authorization to submit expert testimony not already of
`
`record with its patent owner preliminary response. Versata requested authorization
`
`
`1 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 Action
`
`a.
`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. 2012-
`
`b.
`1029, -1049, U.S. Court of Appeals for the Federal Circuit.
`
`
`Paper 3 at 2.
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`2
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`Case CBM2012-00001
`Patent 6,553,350
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`as the rules do not permit submission of new testimonial evidence beyond that
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`already of record, except as authorized by the Board. 37 C.F.R. § 42.207.
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`
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`According to Versata, the proposed testimonial evidence would be directed
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`to SAP’s standing to pursue a covered business method review. In particular,
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`Versata’s proposed expert would testify as to the meaning of the portion of section
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`18(d)(1) of the America Invents Act that defines a covered business method as a
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`patent that claims a method or corresponding apparatus for performing data
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`processing or other operations used in the practice, administration, or management
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`of a financial product or service. SAP opposed Versata’s request stating that the
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`expert would be testifying as to a question of statutory interpretation.
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`
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`The rules provide that testimony on United States patent law will not be
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`permitted. 37 C.F.R. § 42.65(a). Versata’s request to submit testimony
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`interpreting the meaning of section 18(d)(1) is denied as it seeks to provide expert
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`testimony on U.S. patent law.
`
`
`
`
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`
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`b.
`
`Request for Additional Discovery
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`Versata requested that it be provided additional discovery. Specifically,
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`Versata’s covered business method review counsel sought to obtain discovery of
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`all SAP documents produced under the district court protective order in the related
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`litigation. SAP opposed.
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`3
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`Case CBM2012-00001
`Patent 6,553,350
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`The rules provide that the parties may agree to additional discovery between
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`themselves. Where the parties fail to agree however, a party may move for
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`additional discovery. 37 C.F.R. § 42.51(b)(2). For a covered business method
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`review, a party must show good cause why the requested additional discovery is
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`needed and that the discovery request is limited to evidence directly related to
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`factual assertions advanced by a party in the proceeding. 37 C.F.R. § 42.224.
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`
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`According to Versata, SAP relied upon experts in the related litigation who
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`testified that SAP did not infringe Versata’s involved ’350 patent and that the
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`’350 patent was invalid. According to Versata, the protective order in the related
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`litigation precludes Versata’s counsel in this proceeding from having access to
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`SAP’s documents provided under the protective order. Versata stated that it
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`requires all the SAP documents produced in the district court litigation as SAP has
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`alleged that certain claims of the ’350 patent are invalid based upon SAP’s “R/3”
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`documentation and that this documentation was discussed by SAP’s experts in the
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`related litigation.
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`
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`SAP opposed Versata’s request stating that Versata’s request was unduly
`
`broad and encompassed numerous documents that were irrelevant to the issues
`
`raised in this proceeding. SAP indicated that they would consider producing
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`specific documents should Versata limit its request.
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`4
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`Case CBM2012-00001
`Patent 6,553,350
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`The Board denied Versata’s request for additional discovery without
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`prejudice to a request of a more limited nature, e.g., SAP expert reports directed to
`
`invalidity. Versata and SAP agreed that they will seek to resolve this discovery
`
`issue, prior to Versata requesting further Board involvement.
`
`
`
`
`
`
`
`
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`
`
`c.
`
`
`Request for Pro Hac Vice and Reliance on Experts involved in
`the Related District Court Litigation
`
`Versata requests pro hac vice admission for Mr. Scott L. Cole. Versata
`
`Motion for Admission Pro Hac Vice, Paper 12. Versata represents that good cause
`
`exists for Mr. Cole’s admission as Mr. Cole represented Versata as “lead counsel
`
`in the Versata v. SAP patent infringement litigation (Civil Action No. 07-cv-
`
`00153), which involved the same patent at issue in this proceeding.” Id. at 3.
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`
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`SAP opposes Versata’s request. SAP Opposition to Motion for Pro Hac
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`Vice Admission, Paper 15. SAP states that Mr. Cole, as trial counsel in the related
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`litigation, gained access to highly confidential and proprietary information about
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`SAP and its products. The use of this information is said to be governed by a
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`protective order from the district court. SAP expressed a concern that Mr. Cole’s
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`participation in both the district court litigation and the review proceeding puts him
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`in a position where he could affect the scope of the claims of the ’350 patent while
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`Patent 6,553,350
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`knowing how SAP’s products operate beyond that publically known. Id. at 2.
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`SAP also represents that:
`
`[A]llowing Mr. Cole to participate in this proceeding could effectively
`circumvent the restrictions of the underlying district court’s protective
`order, which precludes litigation counsel’s use of any SAP protected
`materials beyond the scope of that litigation.
`
`
`Id. at 3.
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`
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`In addition to Mr. Cole, Versata also seeks to employ expert witnesses in
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`this proceeding that had access to SAP’s confidential information in the related
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`litigation. SAP again sought to oppose this reliance representing that the protective
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`order in the related litigation precluded the use of experts and consultants that
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`received information under the district court protective order in proceedings before
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`the Office.
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`
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`Versata sought to allay SAP’s concerns by stating that they would not seek
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`to file a motion to amend in this proceeding. The Board appreciates Versata’s
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`attempt to lessen any potential prejudice to SAP should Versata be authorized to
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`rely upon Mr. Cole and the requested experts. The Board however, has reviewed
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`Versata’s motion for pro hac vice and has determined that it requires further
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`information regarding the protective order to better understand what, if any, impact
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`the district court’s protective order has upon this proceeding.
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`6
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`Case CBM2012-00001
`Patent 6,553,350
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`II.
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`Board Request for Additional Information
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`
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`The parties have raised several issues relating to the district court’s
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`protective order. A copy of the district court’s protective order, however, is not of
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`record in this proceeding. To better understand the interplay between the district
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`court’s protective order and this proceeding, the parties are to file a copy of the
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`district court’s protective order. Additionally, the parties are to file any district
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`court rulings related to the protective order, including but not limited to, rulings
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`concerning the scope of the protective order, revisions to the protective order and
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`any violations and enforcement of the protective order. Since Versata is
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`requesting relief, Versata shall file, as exhibits, a copy of the protective order and
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`any ruling concerning the scope of the protective order as set forth above by
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`November 5, 2012.
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`III. Authorization for Joint Motion
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`The parties expressed a willingness to seek a mutually agreeable resolution
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`of certain issues in this proceeding. Specifically, the parties have agreed to discuss
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`the following issues:
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`Versata’s discovery of SAP documents from the related litigation.
`1)
`2) Whether the parties agree that the time for filing a patent owner
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`preliminary response should be extended from the current due date of
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`November 16, 2012 to not later than December 17, 2012.
`3)
`Entry of an agreed upon protective order for this proceeding.
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`7
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`Case CBM2012-00001
`Patent 6,553,350
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`4) Whether SAP will withdraw its objection to Versata’s use in this
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`proceeding of Versata’s experts from the related litigation.
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`The parties agreed to discuss the above matters and file a joint motion
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`identifying any resolution of the above matters by no later than Monday,
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`November 5, 2012. As the Board is requesting additional information relating to
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`the district court protective order, the Board authorizes the filing of the joint
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`motion for no later than Friday, November 9, 2012.
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`
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`Patent owner’s preliminary response was set by the Board in a prior order
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`for November 16, 2012. Paper 14. The Board appreciates the parties’
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`willingness to discuss resolution of the above in order to simplify the issues
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`in this proceeding. So that the parties’ efforts to seek joint resolution do not
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`impinge upon patent owner’s efforts to complete its preliminary response, the
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`Board exercises its discretion and resets the time for filing the preliminary
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`response to November 23, 2012.
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`8
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`Case CBM2012-00001
`Patent 6,553,350
`
`PETITIONER:
`
`
`Erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
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`9
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