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Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`SAP AMERICA INC. AND SAP AG
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP INC.
`Patent Owner.
`_________________
`Case CBM2012-00001 (MPT)
`Patent 6,553,350
`_________________
`Before Administrative Patent Judges: MICHAEL P. TIERNEY, SALLY C.
`MEDLEY and RAMA G. ELLURU
`Mail Stop
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`PETITIONER SAP’S SUBMISSION OF EXHIBITS REGARDING
`DISTRICT COURT PROTECTIVE ORDER
`
`In reply to the Board’s November 1, 2012, Order [Paper No. 16], and Patent
`
`Owner’s November 2, 2012, Filing of Exhibits in response to that order [Paper
`
`No. 17], Petitioners SAP America Inc. and SAP AG (collectively “SAP”) hereby
`
`
`
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`

`
`submit copies of the following documents relating to the protective order entered
`
`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
`
`in the underlying district court litigation:
`
`1. Memorandum Opinion and Order (Dkt. No. 572), Versata Software,
`Inc. et al. v. SAP America, Inc. et al., No. 2:07-cv-153 (E.D. TX) (see
`pp. 1, 13, discussing violations of the Court’s Protective Order) [SAP
`Exhibit 1022];
`
`2. Highlighted version of SAP Exhibit 1022, Memorandum Opinion and
`Order (Dkt. No. 572), Versata Software, Inc. et al. v. SAP America,
`Inc. et al., No. 2:07-cv-153 (E.D. TX) (see pp. 1, 13, discussing
`violations of the Court’s Protective Order) [SAP Exhibit 1023];
`
`3. Redacted Transcript of May 14, 2009, Motions Hearing, Versata
`Software, Inc. et al. v. SAP America, Inc. et al., No. 2:07-cv-153 (E.D.
`TX) (see pp. 39-81, addressing violations of the Court’s Protective
`Order) [SAP Exhibit 1024];
`
`4. Highlighted version of SAP Exhibit 1024, Redacted Transcript of
`May 14, 2009, Motions Hearing, Versata Software, Inc. et al. v. SAP
`America, Inc. et al., No. 2:07-cv-153 (E.D. TX) (see highlighted
`portions on pp. 39-81, addressing violations of the Court’s Protective
`Order) [SAP Exhibit 1025];
`
`5. Order Granting Plaintiff’s Unopposed Motion to Redact May 14, 2009
`Hearing Transcript, Versata Software, Inc. et al. v. SAP America, Inc.
`et al., No. 2:07-cv-153 (E.D. TX) [SAP Exhibit 1026];
`
`6. Civil Docket Report for Versata Software, Inc. et al. v. SAP America,
`Inc. et al., No. 2:07-cv-153 (E.D. TX) [SAP Exhibit 1027]; and
`
`7. ORDER Setting Hearing on Motion for Protective Order (Dkt. No.
`157), Versata Software, Inc. et al. v. SAP America, Inc. et al., No.
`2:07-cv-153 (E.D. TX) [SAP Exhibit 1028].
`
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`SAP also identifies the following sealed docket entries relating to protective
`
`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
`
`order issues in the district court case:1
`
`1. 02/19/2009 Sealed SAP’s Motion to Strike Versata’s Equitable
`Claims as Sanction for Versata’s Violation of the March 6, 2008
`Protective Order and February 26, 2008 Order (Dkt. No. 144);
`
`2. 03/03/2009 Sealed Response in Opposition to SAP'S Motion to Strike
`Versata’s Equitable Claims, filed by Versata Software, Inc (Dkt. No.
`159);
`
`3. 03/10/2009 Sealed Reply in Support of SAP’s Motion to Strike
`Versata’s Equitable Claims, filed by SAP America, Inc., SAP AG
`(Dkt. No. 166);
`
`4. 03/17/2009 Sealed Sur-Reply to SAP’s Reply to Response to SAP'S
`Motion to Strike Versata’s Equitable Claims, filed by Versata
`Software, Inc., (Dkt. No. 173)
`
`5. 07/16/2009 Sealed Supplemental Sur-Reply to Reply to Response to
`SAP'S Motion to Strike Versata’s Equitable Claims, filed by Versata
`Software, Inc. (Dkt. No. 235); and
`
`6. 07/17/2009 Sur-Reply to Reply to Response to SAP'S Motion to
`Strike Versata’s Equitable Claims, filed by SAP America, Inc., SAP
`AG. (Dkt. No. 244).
`
`
`
`
`
`
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`
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`Regarding Section I.c of the Board’s Order, Versata’s offer not to amend its
`
`claims does not allay SAP’s concerns regarding participation by Versata’s lead
`
`trial counsel in this proceeding. It is well established that, with or without a formal
`
`amendment, statements and arguments made during post-grant proceeding can
`
`change the meaning of a claim term, and thus scope of that claim. See Marine
`
`1 Copies are not provided because of the sealed nature of the documents.
`
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`Polymer Technologies, Inc. v. Hemcon, Inc. 672 F.3d 1350, 1363-64 (Fed. Cir.
`
`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
`
`2012) (en banc); Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324,
`
`1336 (Fed.Cir.2011); CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1362–
`
`63 (Fed.Cir.2007). Thus, even if Versata does not amend its claims, Mr. Cole can
`
`still influence the scope of Versata’s claims through his participation in this
`
`proceeding.
`
`
`
`Dated: November 5, 2012
`
`
`
`Respectfully submitted,
`
`
`By: /Joseph E. Palys/
`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
`
`Attorneys for Petitioners SAP America,
`Inc. and SAP AG
`
`
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`

`

`
`
`Case No. CBM2012-00001
`Attorney Docket No. 09449.0025-00000
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER SAP’S
`
`SUBMISSION OF EXHIBITS REGARDING DISTRICT COURT PROTECTIVE
`
`ORDER and PETITIONER SAP’S EXHIBIT LIST was served on
`
`November 5, 2012, 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.
`
`
`
` /Larry White/
`Larry White
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, L.L.P.
`
`
`
`
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`

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