Volusion, Inc.v.Versata Development Group, Inc.Download PDFPatent Trial and Appeal BoardJun 17, 201409884180 (P.T.A.B. Jun. 17, 2014) Copy Citation Trials@uspto.gov Paper 53 571-272-7822 Date: June 17, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ VOLUSION, INC. Petitioner v. VERSATA SOFTWARE, INC. AND VERSATA DEVELOPMENT GROUP, INC. Patent Owner ____________ Case CBM2013-00017 Patent 6,834,282 B1 ____________ Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and KEVIN F. TURNER, Administrative Patent Judges. MEDLEY, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. § 42.73 On May 27, 2014, the parties informed the Board that the parties had settled the proceeding, along with the related District Court case, and that the parties sought authorization to file a joint motion to terminate the proceeding. The following morning, the parties filed a copy of the settlement agreement, along with CBM2013-00017 Patent 6,834,282 2 a joint request to keep the agreement as business confidential information and to keep the agreement separate from the file of the involved patent. Paper 50; Ex. 1025. The already-scheduled hearing took place that afternoon, May 28, 2014. Counsel for Patent Owner was the sole presenter. On June 3, 2014, the parties were authorized to file a joint motion to terminate the proceeding. Paper 51. On June 6, 2014, and pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74, the parties filed a joint motion to terminate the proceeding. Paper 52. In the joint motion, the parties represent that the settlement agreement filed on May 28, 2014 is a true copy and resolves all Patent Office and District Court proceedings between the parties, including related case Versata Software, Inc., et al. v. Volusion, Inc., Civ. A. No. 1:12-cv-00893-SS (W.D. Tex.). Id. at 2. According to the motion, no other party has petitioned for a covered business method patent review or an inter partes review with respect to the ’282 patent. Lastly, the motion indicates that while there are pending District Court cases between the Patent Owner and various third parties, the only claims being asserted or that will be asserted in those cases are claims that are not part of this trial. Id. at 4-5. This covered business method patent review was instituted for claims 1-20 based solely upon Petitioner’s assertion that claims 1-20 are unpatentable under 35 U.S.C. § 101. While this case is in the late stages of the trial, no final written decision has been made. Based on the facts of this case, it is appropriate to enter judgment. 1 Therefore, the joint motion to terminate the proceeding is granted. Accordingly, it is ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file 1 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. CBM2013-00017 Patent 6,834,282 3 is granted; and FURTHER ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that Patent Owner’s request for rehearing of the dismissal of Patent Owner’s Motion to Exclude (Paper 48) is dismissed as moot. CBM2013-00017 Patent 6,834,282 4 For PETITIONER: Keith Broyles Jason Cooper David Frist ALSTON & BIRD LLP Keith.broyles@alston.com Jason.cooper@alston.com David.frist@alston.com For PATENT OWNER: Kent Chambers TERRILE, CANNATTI, CHAMBERS & HOLLAND LLP kchambers@tcchlaw.com David O’Brien John Russell Emerson HAYNES AND BOONE, LLP David.obrien@haynesboone.com Russell.ermerson@haynesboone.com Copy with citationCopy as parenthetical citation