Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 24
`
`Entered: November 15, 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
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 24
`
`Entered: November 15, 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
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`A conference call was held on November 14, 2012 at approximately
`
`2:00 p.m. involving:
`
`Erika Arner and Joseph Palys, counsel for SAP
`1.
`2. Martin Zoltick and Nancy Link, counsel for Versata,
`3. Michael Tierney, Sally Medley and Rama Elluru, Administrative
`
`Patent Judges.
`
` court reporter was present on the call.1 The purpose of the call was to discuss
`
`
`
`
`
`
` A
`
`the parties’ joint submission filed November 9, 2012. The joint submission
`
`identified four issues for discussion. The issues and the Board’s decisions thereon
`
`are as follows.
`
`
`
`
`
`I.
`
`Protective Order
`
`
`
`The parties have discussed entry of a protective order, but have not yet
`
`agreed upon the terms. Specifically, Versata represented during the conference
`
`call that it was willing to adopt the Board’s default protective order. SAP,
`
`however, has requested modifications to the protective order and represented that
`
`the modifications were consistent with those adopted in the related district court
`
`litigation protective order.
`
`
`1 This Order summarizes statements made during the conference call. A more
`complete record may be found in the transcript, which is to be filed by Versata as
`an exhibit.
`
`
`
`2
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`
`
`At the conference call, the parties represented that they were confident that
`
`they would reach an agreement as to an appropriate protective order for this
`
`proceeding. The Board requested that the parties reach an agreement by no later
`
`than close of business on Friday, November 16, 2012. Should the parties be unable
`
`to reach an agreement, the parties are to contact the Board and arrange for a
`
`conference call on Monday, November 19, 2012.
`
`
`
`II. Versata’s Request for Additional Discovery
`
`
`
`Versata previously requested that additional discovery be provided as to
`
`documents that were previously produced during the related district court
`
`litigation. According to Versata, the documents relate to allegations of invalidity
`
`of the involved ’350 patent based on SAP’s “R/3” documentation. See Paper 16, 4.
`
`The parties were unable to reach agreement as to the production of these
`
`documents.
`
`
`
`At the conference call, Versata requested additional discovery of three
`
`groups of documents. These requests are discussed below.
`
`
`
`
`
`
`
`i.
`
`Five Specifically Identified Documents
`
`Versata requested that unredacted copies of the following five documents be
`
`produced: 1) Boyd expert report, 2) Boyd deposition transcript, 3) Nettles expert
`
`
`
`3
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`report, 4) Nettles deposition transcript; and 5) SAP’s motion for JMOL. SAP
`
`objected to Versata’s request alleging that the documents are not relevant to the
`
`issues raised in the proceeding.
`
`
`
`The Board requested that SAP identify any prejudice to providing the
`
`requested documents. SAP did not identify any prejudice other than an alleged
`
`lack of relevance. Versata disagreed, contending that the requested documents
`
`related to issues of validity raised in the related litigation. Based upon the facts
`
`presented, the Board ordered SAP to produce the five requested documents once a
`
`protective order is entered in this proceeding.
`
`
`
`
`
`
`
`
`ii.
`
`
`Appendices and Exhibits Cited in the Five Specifically Identified
`Documents
`
`Versata requested that all appendices and exhibits cited in the five
`
`specifically identified documents be produced. SAP opposed this request
`
`contending that many of the requested documents are not relevant to the issues
`
`raised in this proceeding.
`
`
`
`The Board requested that Versata contact SAP as to which of the exhibits
`
`and appendices it required and generally identify the relevance of the sought after
`
`documents. Should the parties be unable to agree as to the production of a
`
`
`
`4
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`particular document, the parties are to contact the Board and arrange for a
`
`conference call.
`
`
`
`
`
`
`
`iii. General Request for Documents Relating to “R/3” Documentation
`
`Versata generally requested that SAP produce any documents relating to the
`
`“R/3” documentation. SAP opposed on various grounds.
`
`
`
`The Board denied Versata’s request without prejudice to raising the issue,
`
`should the Board institute a trial.
`
`
`
`III. Versata Experts
`
`
`
`Versata requested that the Board authorize the use of its experts from the
`
`related litigation. SAP opposed contending that the use of the Versata experts
`
`would violate the district court’s protective order.
`
`
`
`The Board takes no position as to whether or not Versata’s use of the experts
`
`violates the district court’s protective order.
`
`
`
`IV. Time for Filing Patent Owner Preliminary Response
`
`
`
`Versata requested that the time for filing a patent owner preliminary
`
`response be extended from November 23, 2012 to December 17, 2012. The Board
`
`noted that November 23, 2012 is the day after Thanksgiving. The Board extended
`
`
`
`5
`
`
`
`Case CBM2012-00001
`Patent 6,553,350
`
`the time for filing to November 30, 2012 to avoid conflicting with the
`
`Thanksgiving holiday.
`
`
`
`PETITIONER:
`
`
`Erika.arner@finnegan.com
`CPdocketkiklis@oblon.com
`
`
`
`PATENT OWNER:
`
`nlinck@rfem.com
`VERSATA-PGR@rfem.com
`
`
`
`6
`
`
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