Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`JOINT REQUEST TO KEEP SEPARATE
`PURSUANT TO 35 U.S.C. § 327(b) AND 37 C.F.R. § 42.74
`
`
`U.S. Patent No. 6,834,282
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`JOINT REQUEST TO KEEP SEPARATE
`PURSUANT TO 35 U.S.C. § 327(b) AND 37 C.F.R. § 42.74
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Patent Owner and Petitioner (together, “the Parties”), have reached a
`
`settlement and executed a Settlement Agreement regarding U.S. Patent No.
`
`6,834,282 (“the ’282 Patent”), filed concurrently herewith as Exhibit 1025.
`
`The Parties jointly request that the Board treat the Settlement Agreement as
`
`business confidential information and keep it separate from the file of the
`
`involved patent.
`
`Statement of Precise Relief Requested
`
`The Parties jointly request that the Board treat the Settlement
`
`Agreement (Exhibit 1025) as business confidential information and keep it
`
`separate from the file of the involved patent, and made available only to
`
`Federal Government agencies on written request or to any person only on a
`
`showing of good cause, as provided for in 35 U.S.C. § 327(b) and 37 C.F.R.
`
`§ 42.74.
`
`Statement of Reasons for the Relief Requested
`
`The Parties have executed a Settlement Agreement regarding their
`
`disputes relating to the ’282 Patent. The Settlement Agreement addresses
`
`this Covered Business Method Review, as well as disputes regarding the
`
`’282 Patent involved in Versata Software, Inc., et al. v. Volusion, Inc., Civ.
`
`A. No. 1:12-cv-00893-SS (W.D. Tex.). The Settlement Agreement provides
`
`that the terms of the Settlement Agreement are confidential.
`
`1
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`The Petitioner has filed, concurrently herewith, a copy of the
`
`Settlement Agreement (Exhibit 1025) with the Board, as required by 35
`
`U.S.C. § 327(b) and 37 C.F.R. § 42.74. Exhibit 1025 was filed in the PRPS
`
`system to provide availability to “Parties and Board Only.” The Parties
`
`jointly request that the Settlement Agreement be treated as business
`
`confidential information and be kept separate from the file of the involved
`
`patent, pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
`
`Jointly submitted,
`
`Dated: May 28, 2014
`
`s/ David W. O’Brien
`David W. O’Brien (Reg. No. 40,107)
`HAYNES AND BOONE, LLP
`Attorney for Patent Owner
`
`s/ Keith E. Broyles
`Keith E. Broyles (Reg. No. 42,365)
`keith.broyles@alston.com
`Jason P. Cooper (Reg. No. 38,114)
`jason.cooper@alston.com
`David S. Frist (Reg. No. 60,511)
`david.frist@alston.com
`ALSTON & BIRD LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, Georgia 30309-3424
`Tel.: (404) 881-7000
`Fax: (404) 881-7777
`
`Attorneys for
`Petitioner Volusion, Inc.
`
`2
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`PETITIONER VOLUSION, INC.’S
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 1001:
`
`U.S. Patent No. 6,834,282
`
`Exhibit 1002:
`
`Exhibit 1003:
`
`Exhibit 1004:
`
`Exhibit 1005:
`
`Exhibit 1006:
`
`Exhibit 1007:
`
`Exhibit 1008:
`
`Exhibit 1009:
`
`Transitional Programs for Covered Business Method
`Patents – Definitions of Covered Business Method
`Patent and Technological Invention, 77 Fed. Reg. 157
`(August 14, 2012)
`
`United States Patent and Trademark Office –
`Classification Definitions, Class 705
`
`A Guide to the Legislative History of the America
`Invents Act; Part II of II, 21 Fed. Cir. Bar. J. No. 4
`
`Complaint for Patent Infringement, Versata Software,
`Inc., et al. v. Volusion, Inc., Civil Action No. 1:12-cv-
`893-SS (W.D. Tex.), filed September 25, 2012
`
`Changes to Implement Inter Partes Review
`Proceedings, Post-Grant Review Proceedings, and
`Transitional Program for Covered Business Method
`Patents, 77 Fed. Reg. 157 (August 14, 2012)
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 157
`(August 14, 2012)
`
`Order Instituting Certain Business Method Patent
`Review, SAP America, Inc. v. Versata Development
`Grp., Inc., CBM2012-00001, Paper No. 36
`
`Order Instituting Certain Business Method Patent
`Review, Interthinx, Inc. v. Corelogic Solutions, Inc.,
`CBM2012-000007, Paper No. 15
`
`3
`
`
`
`Exhibit No.
`
`Exhibit 1010:
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Description
`
`USPTO Docket No. PTO-P-2011-0087, Final Rule,
`Definitions of Covered Business Method Patent and
`Technological Invention
`
`Exhibit 1011:
`
`Prosecution History for U.S. Patent No. 6,834,282
`
`Exhibit 1012:
`
`Power of Attorney
`
`Exhibit 1013:
`
`Certificate of Service
`
`Exhibit 1014:
`
`Decision, Institution of Covered Business Method
`Patent Review of U.S. Patent No. 7,426,481, Case No.
`CBM2013-00018, Paper No. 8
`
`Exhibit 1015:
`
`Certificate of Service
`
`Exhibit 1016:
`
`Exhibit 1017:
`
`Exhibit 1018:
`
`Exhibit 1019:
`
`Transcript of the March 10, 2014 deposition of Scott
`Nettles
`
`Declaration of Philip Greenspun in Support of
`Petitioner’s Reply to Patent Owner Response
`
`Declaration of Philip Greenspun in Support of
`Petitioner’s Opposition to Motion to Amend
`
`Plaintiffs’ Proposed Claim Constructions, Versata
`Software, Inc., et al. v. Volusion, Inc., Civil Action No.
`1:12-cv-893-SS (W.D. Tex.), served June 17, 2013
`
`Exhibit 1020:
`
`Greenspun Demonstrative A
`
`Exhibit 1021:
`
`Greenspun Demonstrative B
`
`Exhibit 1022:
`
`Greenspun Demonstrative C
`
`Exhibit 1023:
`
`Curriculum Vitae of Philip Greenspun
`
`4
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Exhibit No.
`
`Description
`
`Exhibit 1024:
`
`Petitioner’s Demonstratives
`
`Exhibit 1025
`
`Settlement Agreement between Petitioner and Patent
`Owner dated May 27, 2014 (CONFIDENTIAL)
`
`5
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 CFR § 42.6(e), that
`
`service of JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35
`
`U.S.C. § 327(b) AND 37 C.F.R. § 42.74 was made by email upon all
`
`counsel of record on May 28, 2014 including the following counsel for the
`
`Patent Owner listed below:
`
`David W. O’Brien
`William B. Nash
`John Russell Emerson
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Ste. 700
`Dallas, TX 75219
`Telephone: (512) 867-8457
`Fax: (214) 200-0853
`Email: david.obrien.ipr@haynesboone.com
`Email: bill.nash@haynesboone.com
`Email: russell.emerson.ipr@haynesboone.com
`
`Dated: May 28, 2014
`
`/Keith E. Broyles/
`Keith E. Broyles
`(Reg. No. 42,365)
`
`6
`
`
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