Trials@uspto.gov Paper 51
`571-272-7822
`
`Date: June 3, 2014
`
`
`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 Owners
`____________
`
`Cases CBM2013-00017 (Patent 6,834,282 B1)
`CBM2013-00018 (Patent 7,426,481 B1)
`____________
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On May 27, 2014, the parties informed the Board that the parties had settled
`the two proceedings, along with the related litigation, and that the parties sought
`authorization to file a joint motion to terminate the two proceedings. The
`following morning, the parties filed a copy of the settlement agreement, along with
`
`

`

`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`a joint request to keep the agreement as business confidential information and to
`keep the agreement separate from the file of the involved patent. Paper 50; Ex.
`1025.1 The already-scheduled hearing took place that afternoon, May 28, 2014.
`During the hearing, we informed the parties that their request to file a joint motion
`was granted and that an order setting forth the procedure for filing such a motion
`would be forthcoming. This is the order.
`Upon consideration of the parties’ request and information, we authorize the
`filing of a joint motion to terminate the instant proceedings. The joint motion must
`include a sufficient explanation as to why termination is appropriate, especially at
`such a late stage when both parties already filed all of their written briefs. The
`joint motion also must inform the Board of the status of any litigation or
`proceeding, including, but not limited to, proceedings in the U.S. Patent and
`Trademark Office, involving either of the involved patents, and advise the Board
`whether any litigation or proceeding involving either of the involved patents is
`contemplated in the foreseeable future. Under 35 U.S.C. § 327(a), the Board has
`the option to terminate the proceeding with respect to Petitioner and then, with no
`petitioner remaining in the proceeding, proceed to a final written decision.
`A joint motion to terminate ordinarily must be accompanied by a true copy
`of the settlement agreement in connection with the termination of a proceeding, as
`required by 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b). The parties already have
`filed a copy of the settlement agreement; however, there is no representation made
`by the parties that the settlement agreement filed on May 28, 2014 is a true copy.
`As such, the parties must make a representation in the joint motion to terminate
`that the copy of the settlement agreement filed with the Board on May 28, 2014 is
`a true copy of the settlement agreement.
`
`1 References are to CBM2013-00017.
`
`2
`
`
`

`

`CBM2013-00017 (Patent 6,834,282)
`CBM2013-00018 (Patent 7,426,481)
`
`
`It is
`ORDERED that the parties are authorized to file a separate joint motion to
`terminate in each of the two proceedings in accordance with this order; and
`FURTHER ORDERED that the joint motions are due June 6, 2014.
`
`
`
`For PETITIONER:
`
`Keith Broyles
`Jason Cooper
`David Frist
`ALSTON & BIRD LLP
`Keith.broyles@alston.com
`Jason.cooper@alston.com
`David.frist@alston.com
`
`For PATENT OWNER:
`
`Kent Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND LLP
`kchambers@tcchlaw.com
`
`David O’Brien
`John Russell Emerson
`HAYNES AND BOONE, LLP
`David.obrien@haynesboone.com
`Russell.ermerson@haynesboone.com
`
`
`3
`
`
`