`Filed: November 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`CALLIDUS SOFTWARE, INC.
`Petitioner
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`v.
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`VERSATA DEVELOPMENT
`GROUP, INC.
`Patent Owner
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`AND
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`VERSATA SOFTWARE, INC.
`Real Party-In-Interest
`___________________
`
`Case CBM2014-00117
`Patent 7,908,304
`_____________________
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`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO 35 U.S.C. §
`327(b) AND 37 C.F.R. § 42.74
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`Patent Owner and Petitioner (together, “the Parties”), have reached a
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`Parties’ Joint Request to Keep Separate
`CBM2014-00117 (Patent 7,908,304)
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`settlement and executed a Reseller Agreement regarding U.S. Patent No. 7,908,304
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`(“the ’304 Patent”). A true copy of the Reseller Agreement is filed concurrently
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`herewith as Exhibit 2014.
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`I.
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`Statement of Precise Relief Requested
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`The Parties jointly request that the Board treat the Reseller Agreement
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`(Exhibit 2014) as business confidential information, keep it separate from the file
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`of the involved patent, and made available only to Federal Government agencies
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`on written request or to any person only on a showing of good cause, as provided
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`for in 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74.
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`II.
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`Statement of Reasons for the Relief Requested
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`The Parties have executed a Reseller Agreement regarding their disputes
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`relating to the ’ 304 Patent. The Reseller Agreement addresses this covered
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`business method review, as well as disputes regarding the’304 Patent involved in
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`Versata Software, Inc. et al. v. Callidus Software Inc., No. 1:12-cv-931-SLR (D.
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`Del.). The Reseller Agreement provides that the terms of the Reseller Agreement
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`are confidential.
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`Patent Owner has filed, concurrently herewith, a copy of the Reseller
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`Agreement (Exhibit 2014) with the Board, as required by 35 U.S.C. § 327(b) and
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`37 C.F.R. § 42.74. Exhibit 2014 was filed in the PRPS system to provide
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`availability to “Parties and Board Only.” The Parties jointly request that the
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`Parties’ Joint Request to Keep Separate
`CBM2014-00117 (Patent 7,908,304)
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`Reseller Agreement be treated as business confidential information and be kept
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`separate from the file of the involved patent, pursuant to 35 U.S.C. § 327(b) and 37
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`C.F.R. § 42.74(c).
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`Date: November 19, 2014
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`Date: November 19, 2014
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`Respectfully submitted,
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`/Kent B. Chambers/
`Kent B. Chambers
`Reg. No. 38,839
`Counsel for Patent Owner
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`/Deborah E. Fishman/
`Deborah E. Fishman
`Reg. No. 48,621
`Counsel for Petitioner
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`2
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`Parties’ Joint Request to Keep Separate
`CBM2014-00117 (Patent 7,908,304)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`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
`
`_____________________
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105, that
`service was made on the Patent Owner as detailed below.
`Date of service November 19, 2014
`Manner of service By email upon counsel of record listed below
`Document served Parties’ Joint Request to Keep Separate
`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
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`/Kent B. Chambers/
`Kent B. Chambers
`Registration No. 38,839
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