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` Paper 45
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` Entered: November 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Cases CBM2013-00052 (Patent 7,904,326 B2)
`CBM2013-00053 (Patent 7,958,024 B2)
`CBM2013-00054 (Patent 7,908,304 B2)1
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This order addresses an issue that is identical in all three cases. Therefore, we
`exercise discretion to issue one order to be filed in each of the three cases. The
`parties, however, are not authorized to use this style heading in subsequent papers
`since doing so may cause confusion.
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`On November 13, 2014, the parties informed the Board the parties have a
`written settlement agreement settling these proceedings. The parties seek
`authorization to file a joint motion to terminate the proceedings and to file the
`settlement agreement.
`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 the record is complete with briefing from the parties, and a
`trial hearing has been held. 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 any of the involved patents, and
`advise the Board whether any litigation or proceeding involving any 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). A redacted version of
`the settlement agreement will not be accepted as a true copy of the settlement
`agreement. Any request that the agreement be treated as business confidential
`information and be kept separate from the files of the involved patent must be filed
`with the settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`
` 2
`
`
`
`
`
`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`FAQ G2 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
`
`The joint motion to terminate and the settlement agreement shall be filed no
`later than November 19, 2014.
`It is
`ORDERED that the parties are authorized to file a separate joint motion to
`terminate in each of the proceedings in accordance with this order; and
`FURTHER ORDERED that the joint motions are due November 19, 2014.
`
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`
` 3
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`
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`CASES CBM2013-00052, 00053, 00054
`Patents 7,904,326; 7,958,024; 7,908,304
`
`
`
`
`PETITIONER:
`Deborah Fishman
`Jeffrey Miller
`Michael Tonkinson
`DICKSTEIN SHAPIRO LLP
`fishmand@dicksteinshapiro.com
`millerj@dicksteinshapiro.com
`tonkinsonm@dicksteinshapiro.com
`
`
`PATENT OWNER:
`Kent Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND LLP
`kchambers@tcchlaw.com
`
`Alisa Lipski
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING, P.C.
`alipski@azalaw.com
`
`David O’Brien
`John Russell Emerson
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`
`
` 4
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