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 DEVELOPMENT GROUP, INC.
`Patent Owner
`
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. § 327(a)
`
`AND
`
`JOINT NOTICE OF SETTLEMENT 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 DEVELOPMENT GROUP, INC.
`Patent Owner
`
`
`Case CBM2013-00017
`U.S. Patent No. 6,834,282 B1
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS IN VIEW OF
`SETTLEMENT PURSUANT TO 35 U.S.C. § 327(a)
`
`AND
`
`JOINT NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C.
`§ 327(b) AND 37 C.F.R. § 42.74
`
`
`
`
`
`Patent Owner and Petitioner (together, “the Parties”), have reached a
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`
`settlement regarding U.S. Patent No. 6,834,282 (“the ’282 Patent”).
`
`Pursuant to the Board’s authorization granted by the Order – Conduct of the
`
`Proceeding entered June 3, 2014 (“Order”), the Parties file the instant
`
`motion jointly requesting termination of this Covered Business Method
`
`Review (“CBM”) proceeding.
`
`Statement of Precise Relief Requested
`
`The Parties jointly request that the Board terminate this CBM without
`
`rendering a final written decision.
`
`Statement of Reasons for the Relief Requested
`
`The Parties have reached a settlement and executed a Settlement
`
`Agreement regarding their disputes relating to the ’282 Patent involved in
`
`Versata Software, Inc., et al. v. Volusion, Inc., Civ. A. No. 1:12-cv-00893-
`
`SS (W.D. Tex.). Because there is no longer a case-in-controversy between
`
`the Parties involving the ’282 Patent and because the Board has not yet
`
`decided this CBM on its merits, the Parties jointly request that the Board
`
`terminate this CBM pursuant to 35 U.S.C. § 327(a). The Settlement
`
`Agreement also addresses this CBM.
`
`Petitioner previously filed a copy of the Settlement Agreement (Ex.
`
`1025) with the Board, as required by 35 U.S.C. § 327(b) and 37 C.F.R.
`
`1
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`
`
`
`§ 42.74. The Parties requested in a Joint Request to Keep Separate filed
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`May 28, 2014 (Paper No. 50) that this 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).
`
`As instructed by the Board in the Order, the Parties jointly represent that the
`
`settlement agreement filed as Exhibit 1025 is a true copy of the settlement
`
`agreement entered into by the Parties. Order, p. 2.
`
`Termination of these proceedings without rendering a final written
`
`decision is justified for three fundamental reasons. First, the Parties have
`
`reached a global settlement of all disputes between them and have executed
`
`a final settlement agreement with mutual releases and covenants-not-to-sue.
`
`The settlement resolves all Patent Office and District Court proceedings
`
`between the Parties, eliminating any active controversy before the Board.
`
`Second, no other party has petitioned for covered business method review or
`
`inter partes review with respect to the ’282 patent. No other party is asking
`
`the Board to review the validity of the ’282 patent.
`
`These considerations have prompted the Board to dismiss inter partes
`
`review proceedings under similar circumstances. In Sony Corp. v. Tessera
`
`Inc., the Board dismissed an IPR at an advanced stage of the proceedings
`
`because the parties had resolved both the IPR and related district court
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`2
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`
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`litigation through a “global settlement.” Sony Corp. v. Tessera Inc.
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`(IPR2012-00033), Paper 46, p. 2 (Dec 20, 2013). The Board specifically
`
`noted that, even though the patent owner was asserting the same patent
`
`against a different defendant in district court litigation, that defendant “could
`
`have, but did not, file a petition for inter partes review” or “motion for
`
`joinder, in order to join this review.” Id. For the same reasons, termination
`
`without rendering a final written decision is justified here.
`
`In Interthinx, Inc. v. Corelogic Solutions, LLC (CBM2012-00007), the
`
`Board declined to terminate the proceedings and noted that “Patent Owner
`
`has identified ongoing litigation concerning the subject patent” against a
`
`third party, Redfin Corp., who was not a party to the CBM proceedings.
`
`CBM2012-00007, Paper 47, p. 2 (November 12, 2013).
`
`In these proceedings, per the Board’s Order, Patent Owner has below
`
`identified additional proceedings involving the ’282 Patent. However,
`
`Patent Owner represents that, to the extent that any claims of the ‘282 Patent
`
`are pursued in the identified proceedings, Patent Owner will only pursue
`
`infringement of one or more of the non-instituted claims 21-23.
`
`Furthermore, Patent Owner represents that no additional litigation or
`
`proceeding involving the ’282 Patent is contemplated in the foreseeable
`
`future. Thus, the additional current proceedings involving the ‘282 Patent
`
`3
`
`
`
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`will not involve pursuit of any claims upon which this CBM proceeding was
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`instituted.
`
`Furthermore, if the Board declines to terminate these proceedings in
`
`this case, it would unnecessarily discourage settlement in other cases. In this
`
`case, the filing of a joint motion to terminate these proceedings (as well as
`
`the district court litigation) was an express condition of settlement.
`
`Under these circumstances, there is every reason to honor the Parties’
`
`wishes. Although the Board has discretion to continue a CBM after
`
`settlement, there is no public policy justification for doing so here because
`
`all disputes before the Patent Office regarding the ’282 patent are resolved
`
`and no instituted claims are asserted in any current proceeding.
`
`Status of Litigations or Proceedings
`
`As instructed by the Board in the Order, Patent Owner lists the
`
`following additional litigations involving the ’282 Patent, and their statuses:
`
`Litigation
`Versata Software Inc. and Versata Development
`Group, Inc. v. Cloud9 Analytics Inc (1:12-cv-00925-
`LPS)
`Versata Software Inc. and Versata Development
`Group, Inc. v. Nehanet Corporation (1:12-cv-
`00926-LPS)
`
`Court
`D. Del
`
`Status
`Active
`
`D. Del
`
`Active
`
`4
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`Versata Software Inc. and Versata Development
`Group, Inc. v. Dorado Software, Inc. (2:13:cv-
`00920-MCE-DAD)
`Versata Software Inc. and Versata Development
`Group, Inc. v. Netbrain Technologies, Inc. (1:13-cv-
`00676-UNA)
`Versata Software Inc. and Versata Development
`Group, Inc. v. Infoblox, Inc. (1:13-cv-00678-UNA)
`Versata Software Inc. and Versata Development
`Group, Inc. v. Zoho Corporation (1:13-cv-00371-
`SS)
`
`E.D.CA. Active –
`Stayed
`
`D. Del
`
`Active
`
`D. Del
`
`Active
`
`W.D.Tex. Active
`
`
`In each pending litigation, Patent Owner represents that only claims
`
`21-23 of the ’282 patent are asserted. See Exhibit 2014. Claims 21-23 of
`
`the ’282 patent are not at issue in this CBM proceeding. Institution
`
`Decision (Paper No. 8) at 2.
`
`Patent Owner represents that no other litigations or proceedings are
`
`pending which involve the ’282 Patent. No additional litigation or
`
`proceeding involving the ’282 Patent is contemplated in the foreseeable
`
`future.
`
`
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`5
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`Jointly submitted,
`
`Dated: June 6, 2014
`
` s/ Kent B. Chambers
`Kent B. Chambers (Reg. No. 38,839)
`TERRILE, CANNATTI, CHAMBERS
`& HOLLAND LLP
`Attorney for Patent Owner
`
`
`
`
`
`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`
`
`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.
`
`6
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`
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`Case No. CBM2013-00017
`U.S. Patent No. 6,834,282
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that service was made on
`Petitioner’s counsel of record as detailed below.
`
`Date of service June 6, 2014
`
`Manner of service Electronic Mail (keith.broyles@alston.com)
`
`Documents served JOINT MOTION TO TERMINATE PROCEEDINGS IN
`VIEW OF SETTLEMENT PURSUANT TO 35
`U.S.C. § 327(a) AND JOINT NOTICE OF
`SETTLEMENT PURSUANT TO 35 U.S.C. § 327(b)
`AND 37 C.F.R. § 42.74
`
`Persons served Keith E. Broyles
`Alston & Bird LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
`
`/Kent B. Chambers/
`Kent B. Chambers
`Registration No. 38,839
`
`
`
`
`7
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