Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 21
`
`Entered: November 6, 2012
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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.
`
`
`
`DECISION
`Versata Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
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`
`
`571-272-7822
`
`
`
` Paper 21
`
`Entered: November 6, 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.
`
`
`
`DECISION
`Versata Motion for Pro Hac Vice Admission
` 37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`Versata requests pro hac vice admission for Mr. Scott L. Cole.1 SAP
`
`opposes Versata’s request.2
`
`
`
`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause. 37 C.F.R. § 42.10(c). In authorizing motions for pro hac
`
`vice, the Board required the parties to provide a statement of facts showing there is
`
`good cause for the Board to recognize counsel pro hac vice and an affidavit or
`
`declaration of the individual seeking to appear.3
`
`
`
`Versata represents that good cause exists for Mr. Cole’s admission as
`
`Mr. Cole is an experienced litigating attorney and has an established familiarity
`
`with the subject matter at issue in the proceeding. Paper 12, ¶ 2. In particular,
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`Versata directs the Board to Mr. Cole’s declaration4 where Mr. Cole attests to the
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`fact that he represented Versata as “lead counsel in the Versata v. SAP patent
`
`infringement litigation (Civil Action No. 07-cv-00153), which involved the same
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`patent at issue in this proceeding.” Id. Mr. Cole’s declaration, in addition to
`
`identifying his role as lead counsel in the related litigation, also states that he is a
`
`member of the Texas Bar in good standing and that no sanctions or contempt
`
`
`1 Versata Motion for Admission Pro Hac Vice, Paper 12.
`2 SAP Opposition to Motion for Pro Hac Vice Admission, Paper 15.
`3 Order Authorizing Pro Hac Vice Motions, Paper 9.
`4 Declaration of Scott L. Cole in Support of Motion for Pro Hac Vice Admission,
`Paper 13. As explained during a conference call, this paper should have been filed
`as a separate exhibit and labeled correctly. 37 C.F.R. § 42.63.
`
`
`
`2
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`
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`Case CBM2012-00001
`Patent 6,553,350
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`citations have ever been imposed against him by any court or administrative body.
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`Paper 13, ¶¶ 1, 4, and 8.
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`
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`SAP opposes Mr. Cole’s admission stating that his participation could
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`effectively circumvent the restrictions of the underlying district court’s protective
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`order. Paper 15, 3. During a conference call, it also became apparent that SAP
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`opposes Versata’s reliance on expert witnesses that received access to SAP
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`confidential information in the related litigation, again raising the issue of
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`compliance with the protective order. Order, Paper 16, 6.
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`
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`To better understand what, if any, impact the district court’s protective order
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`has upon this proceeding, the Board requested additional information regarding the
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`protective order. Specifically, the Board required the parties 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. Paper 16, 7.
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`
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`The parties have filed copies of rulings relating to the district court’s
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`protective order. Specifically, Versata has filed a copy of the protective order and
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`a revision to the protective order, Versata exhibits 2001, and 2002. SAP however,
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`filed several additional rulings, including a transcript of a May 14, 2009 motions
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`hearing concerning Versata’s protective order violations, with Mr. Cole
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`
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`3
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`Case CBM2012-00001
`Patent 6,553,350
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`representing Versata at the hearing5. SAP exhibit, 1024. SAP also provided a
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`Memorandum Opinion and Order that states:
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`Pending before the Court is Defendant’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.) The Court held an evidentiary hearing on this issue
`on May 14, 2009. The Court finds that Versata breached the plain
`language of the Protective Order through a pattern of violations
`involving several members of its litigation team and discovery vendor.
`Given Versata’s violation of the Court’s order, it is fair to stay the
`injunction the Court has issued in this case. As a result, the Court
`exercises its equitable discretion in a manner adverse to Versata and
`stays the injunction pending the disposition of any appeal.
`
`SAP exhibit 1022, 13, emphasis added.
`
`
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`Versata’s motion for pro hac vice admission of Mr. Cole and Mr. Cole’s
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`declaration in support thereof are premised in part on Mr. Cole’s position as lead
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`counsel in the related Versata v. SAP litigation. Versata’s motion and Mr. Cole’s
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`declaration do not address or mention the district court’s finding of a pattern of
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`protective order violations in the related litigation for which Mr. Cole was lead
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`counsel.
`
`
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`Versata, as the party moving for pro hac vice admission, bears the burden of
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`showing there is good cause for the Board to recognize counsel pro hac vice during
`
`
`5 On pages 3-4 of SAP’s Submission of Exhibits paper (Paper 19), SAP presents
`additional arguments why Mr. Cole should not be admitted pro hac vice for this
`proceeding. SAP was not authorized to present such arguments and therefore,
`those arguments concerning Section I.c. of the Board’s Order, Paper 16, will not be
`considered by the Board.
`
`
`
`4
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`
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`Case CBM2012-00001
`Patent 6,553,350
`
`the proceeding. Based upon the facts presented, the Board concludes that Versata
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`has failed to meet its burden.
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`
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`
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`It is:
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`Ordered that Versata’s motion for pro hac vice admission of Mr. Scott L.
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`Cole is denied.
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`
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`
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`PETITIONER:
`
`
`Erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
`
`
`
`5
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`
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