SAP America, Incv.Versata Software, Inc.

Patent Trial and Appeal BoardSep 4, 2014

08664837 (P.T.A.B. Sep. 4, 2014)

Trials@uspto.gov Paper 42 571-272-7822 Entered: September 4, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAP AMERICA, INC., Petitioner, v. VERSATA DEVELOPMENT GROUP, INC., Patent Owner. Case CBM2013-00042 Patent 5,878,400 Before MICHAEL P. TIERNEY, TREVOR M. JEFFERSON, and RAMA G. ELLURU, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. Order Joint Motion to Terminate 37 C.F.R. § 42.72 CBM 2013-00042 Patent 5,878,400 2 On August 28, 2014, the parties filed a joint motion to terminate the trial proceedings under 35 U.S.C. § 327(a). Paper 40. Along with the motion, the parties filed Exhibit 1030, a document they described as a true copy of the Settlement Agreement. Paper 40, 4. The parties’ motion requested that Exhibit 1030 (a true copy of the Settlement Agreement) be treated as Business Confidential Information Pursuant to 35 U.S.C. § 327(b). Under 35 U.S.C. § 327(a), “[a] post grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The parties stated in their motion that they have settled their dispute and have reached agreement to terminate this inter partes review and the co-pending litigation. Paper 40, 4. The parties further indicate that they have agreed to resolve all disputes between the parties related to US Patent No. 5,878,400. Paper 40, 4. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The Board is persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. CBM 2013-00042 Patent 5,878,400 3 Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement (Exhibit 1030) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), is GRANTED. CBM 2013-00042 Patent 5,878,400 4 For PETITIONER: Erika Arner Erika.arner@finnegan.com J. Steven Baughman Steven.baughman@ropesgray.com For PATENT OWNER: Nancy Linck nlinck@rfem.com Martin Zotlick mzotlick@rfem.com

SAP America, Inc v. Versata Software, Inc.