Paper 19
`Filed: November 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`CALLIDUS SOFTWARE, INC.
`Petitioner
`v.
`VERSATA DEVELOPMENT GROUP INC.,
`Patent Owner.
`
`AND
`
`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`_________________
`Case CBM2014-00117
`Patent 7,908,304
`_________________
`
`
`
`PETITIONER’S AND PATENT OWNER’S
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 327(a)
`
`
`Filed: November 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`CALLIDUS SOFTWARE, INC.
`Petitioner
`v.
`VERSATA DEVELOPMENT GROUP INC.,
`Patent Owner.
`
`AND
`
`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`_________________
`Case CBM2014-00117
`Patent 7,908,304
`_________________
`
`
`
`PETITIONER’S AND PATENT OWNER’S
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 327(a)
`
`
`
`Case CBM2014-00117
`Patent 7,908,304
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 327(a), 37 C.F.R. § 42.72, and the Board’s
`
`authorization of this motion by e-mail on November 17, 2014 (Paper No. 17),
`
`Petitioner and Patent Owner jointly request termination of Covered Business
`
`Method (“CBM”) Review CBM2014-00117 of U.S. Patent No. 7,908,304 (“the
`
`’304 Patent”).
`
`II.
`
`STATEMENT OF FACTS
`
`The Board instituted this proceeding on March 4, 2014, but the proceeding
`
`has not yet proceeded to a final decision.
`
`On October 27, 2014, Petitioner’s counsel, Deborah Fishman, after
`
`conferring with Patent Owner informed the Board via email that the Parties had
`
`reached an agreement in principle to resolve their dispute and requested a two-
`
`week postponement of oral hearing or to a time thereafter at the Board’s
`
`convenience.
`
`The request to postpone oral hearing was denied, and oral hearings took
`
`place on October 29, 2014. At the end of oral hearing, Patent Owner’s counsel
`
`informed the Board that the Parties expected an agreement settling all disputes
`
`involving the ’304 Patent to be signed shortly and would request authorization to
`
`file a Joint Motion to Terminate these proceedings.
`
`2
`
`
`
`Case CBM2014-00117
`Patent 7,908,304
`The parties have executed a Reseller Agreement (“Agreement”) definitively
`
`resolving all disputes related to the ’304 Patent. Under the Agreement, the parties
`
`will cause the related patent litigation styled Versata Software, Inc., Versata
`
`Development Group, Inc., and Versata, Inc. v. Callidus Software, Inc., Civil
`
`Action No. 1:12-cv-00931-SLR, pending in the United States District Court for the
`
`District of Delaware (“Patent Litigation”) to be dismissed with prejudice.
`
`Petitioners are the only defendants in the Patent Litigation. The Parties have
`
`requested authorization to file this motion seeking termination of this CBM
`
`proceeding.
`
`The ’304 Patent is also involved in CBM2013-00054 before the Board.
`
`CBM2013-00054 is between the same Petitioner and Patent Owner, and a Joint
`
`Motion to Terminate is being concurrently filed in that proceeding. The
`
`’304 Patent is not involved in any other litigation or any other proceeding. Patent
`
`Owner represents that no litigation or any other proceeding involving the
`
`’304 Patent is contemplated in the foreseeable future.
`
`III. PATENT OWNER’S STATEMENT OF EXPLANATION FOR THE
`RELIEF REQUESTED
`
`The Board should terminate CBM2014-00117 without rendering a final
`
`written decision for the following reasons:
`
`3
`
`
`
`Case CBM2014-00117
`Patent 7,908,304
`First, the statutory condition for termination under 35 U.S.C. § 327(a) is
`
`satisfied—this joint motion for termination is being filed before the Board has
`
`decided the merits of the proceeding. Under section 327(a), a post-grant review
`
`shall be terminated, “unless the Office has decided the merits of the proceeding
`
`before the request for termination is filed.” There are no other preconditions of
`
`35 U.S.C. § 327(a).
`
`Second, no motions or other matters are outstanding, and concluding this
`
`review at this juncture promotes efficient use of the resources of the Board and
`
`saves expense for the parties.
`
`Third, the parties have agreed to terminate this proceeding and the related
`
`Patent Litigation under the Agreement, providing a definitive resolution of all
`
`disputes between the parties related to the ’304 Patent. Thus, there is no longer a
`
`case-in-controversy between the Parties involving the ’304 Patent.
`
`Fourth, no other party has petitioned for covered business method review or
`
`inter partes review with respect to the ’304 patent. No other party is asking the
`
`Board to review the validity of the ’304 patent. Patent Owner represents that no
`
`litigation or any other proceeding involving the ’304 Patent is contemplated in the
`
`foreseeable future.
`
`Fifth, this proceeding is at a very early stage. Due Date 1 where the Patent
`
`Owner may file a response and motion to amend has not yet occurred. At this
`
`4
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`
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`Case CBM2014-00117
`Patent 7,908,304
`stage in the proceedings, if the Board declines to terminate these proceedings, 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.
`
`These considerations have prompted the Board to terminate inter partes and
`
`covered business method review proceedings under much later circumstances. In
`
`Clio USA, Inc. v. the Procter and Gamble Company, oral argument took place
`
`before the Boardon July 28, 2014, a joint motion to terminate was filed on October
`
`30, 2014, and the Board terminated the IPR on October 31, 2014. Clio USA, Inc. v.
`
`the Procter and Gamble Company, IPR2013-00438, Paper 57, October 31, 2014.
`
`In Volusion, Inc. v. Versata Software, Inc. and Versata Development Group, Inc.,
`
`the Board terminated two CBM proceedings following oral hearings after the
`
`parties had resolved both the CBM and related litigation proceedings. Volusion,
`
`Inc. v. Versata Software, Inc. and Versata Development Group, Inc., CBM2013-
`
`00017, Paper 53, June 17, 2014 and CBM2013-00018, Paper 52, June 17, 2014. In
`
`Sony Corp. v. Tessera Inc., the Board terminated an IPR at an advanced stage of
`
`the proceedings because the parties had resolved both the IPR and related district
`
`court litigation through a “global settlement.” Sony Corp. v. Tessera Inc.
`
`(IPR2012-00033), Paper 46, p. 2 (Dec 20, 2013).
`
`5
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`Case CBM2014-00117
`Patent 7,908,304
`Thus, under these circumstances, there is every reason to honor the Parties’
`
`wishes as expressed in their Agreement. 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 ’304 Patent are
`
`resolved and no litigation or any other proceeding involving the ’304 Patent is
`
`contemplated in the foreseeable future..
`
`As required under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b), a true copy
`
`of the Agreement by which the parties agreed to terminate the Patent Litigation and
`
`this CBM proceeding has been filed (Exhibit 2014), along with a Joint Request to
`
`Keep Separate filed on November 19, 2014 requesting that the 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).
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
`
`termination of Case No. CBM2014-00117 involving U.S. Patent No. 7,908,304.
`
`6
`
`
`
`Case CBM2014-00117
`Patent 7,908,304
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Kent B. Chambers/
`Kent B. Chambers
`Reg. No. 38,839
`Counsel for Patent Owner
`
`/Deborah E. Fishman/
`Deborah E. Fishman
`Reg. No. 48,621
`Counsel for Petitioner
`
`
`
`
`
`7
`
`
`
`Date: November 19, 2014
`
`
`
`
`
`
`Date: November 19, 2014
`
`
`
`
`
`
`
`
`
`Case CBM2014-00117
`Patent 7,908,304
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the Petitioner as detailed below.
`Date of service November 19, 2014
`Manner of service Electronic Mail (VERSATA-CBM@dicksteinshapiro.com)
`Document served JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 327(a)
`Persons served Deborah E. Fishman, Jeffrey A. Miller, Assad H. Rajani,
`Michael S. Tonkinson
`Dickstein Shapiro LLP
`1841 Page Mill Road, Suite 150
`Palo Alto, CA 94304
`
`
`
`
`
`
`/Kent B. Chambers/
`Kent B. Chambers
`Registration No. 38,839
`
`
`
`8
`
`
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