Trials@uspto.gov Paper 53
`571-272-7822
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`Date: June 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`VOLUSION, INC.
`Petitioner
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`v.
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`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Case CBM2013-00017
`Patent 6,834,282 B1
`____________
`
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`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
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`On May 27, 2014, the parties informed the Board that the parties had settled
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`the proceeding, along with the related District Court case, and that the parties
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`sought authorization to file a joint motion to terminate the proceeding. The
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`following morning, the parties filed a copy of the settlement agreement, along with
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`CBM2013-00017
`Patent 6,834,282
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`a joint request to keep the agreement as business confidential information and to
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`keep the agreement separate from the file of the involved patent. Paper 50; Ex.
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`1025. The already-scheduled hearing took place that afternoon, May 28, 2014.
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`Counsel for Patent Owner was the sole presenter. On June 3, 2014, the parties
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`were authorized to file a joint motion to terminate the proceeding. Paper 51.
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`On June 6, 2014, and pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74,
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`the parties filed a joint motion to terminate the proceeding. Paper 52. In the joint
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`motion, the parties represent that the settlement agreement filed on May 28, 2014
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`is a true copy and resolves all Patent Office and District Court proceedings
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`between the parties, including related case Versata Software, Inc., et al. v.
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`Volusion, Inc., Civ. A. No. 1:12-cv-00893-SS (W.D. Tex.). Id. at 2. According to
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`the motion, no other party has petitioned for a covered business method patent
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`review or an inter partes review with respect to the ’282 patent. Lastly, the motion
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`indicates that while there are pending District Court cases between the Patent
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`Owner and various third parties, the only claims being asserted or that will be
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`asserted in those cases are claims that are not part of this trial. Id. at 4-5.
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`This covered business method patent review was instituted for claims 1-20
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`based solely upon Petitioner’s assertion that claims 1-20 are unpatentable under 35
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`U.S.C. § 101. While this case is in the late stages of the trial, no final written
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`decision has been made. Based on the facts of this case, it is appropriate to enter
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`judgment.1 Therefore, the joint motion to terminate the proceeding is granted.
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`Accordingly, it is
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`ORDERED that the parties’ joint request that the settlement agreement be
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`treated as business confidential information, to be kept separate from the patent file
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`1 A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
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`2
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`CBM2013-00017
`Patent 6,834,282
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`is granted; and
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`FURTHER ORDERED that the joint motion to terminate the proceeding is
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`granted;
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`FURTHER ORDERED that the proceeding is terminated; and
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`FURTHER ORDERED that Patent Owner’s request for rehearing of the
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`dismissal of Patent Owner’s Motion to Exclude (Paper 48) is dismissed as moot.
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`3
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`CBM2013-00017
`Patent 6,834,282
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`For PETITIONER:
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`Keith Broyles
`Jason Cooper
`David Frist
`ALSTON & BIRD LLP
`Keith.broyles@alston.com
`Jason.cooper@alston.com
`David.frist@alston.com
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`For PATENT OWNER:
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`Kent Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND LLP
`kchambers@tcchlaw.com
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`David O’Brien
`John Russell Emerson
`HAYNES AND BOONE, LLP
`David.obrien@haynesboone.com
`Russell.ermerson@haynesboone.com
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`4
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