Volusion, Inc.v.Versata Development Group, Inc.

Patent Trial and Appeal Board

Jun 17, 2014

09884180 (P.T.A.B. Jun. 17, 2014)

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