Patent Owner Denied Additional Discovery for Installable Software Product Described in Printed Manuals: PTAB | Practical Law

Patent Owner Denied Additional Discovery for Installable Software Product Described in Printed Manuals: PTAB | Practical Law

In SAP America, Inc. v. Versata Development Group, Inc., the Patent Trial and Appeal Board (PTAB) rejected the patent owner's request for additional discovery of an installable software product because the covered business method review only involved the software's printed manuals.

Patent Owner Denied Additional Discovery for Installable Software Product Described in Printed Manuals: PTAB

by Practical Law Intellectual Property & Technology
Published on 16 Jul 2014 • USA (National/Federal)
In SAP America, Inc. v. Versata Development Group, Inc., the Patent Trial and Appeal Board (PTAB) rejected the patent owner's request for additional discovery of an installable software product because the covered business method review only involved the software's printed manuals.
On July 10, 2014, in SAP America, Inc. v. Versata Development Group, Inc., the Patent Trial and Appeal Board (PTAB) denied Versata Development Group, Inc.'s (Versata) request for additional discovery to seek an installable copy of the petitioner’s software product, which allegedly invalidates Versata's US Patent No. 5,878,400 ('400 patent) (Case CBM2013-00042 (PTAB July 10, 2014)).
SAP America Inc. (SAP) argued in its petition that the '400 patent is anticipated by printed software manuals describing SAP's R/3 software product. SAP did not challenge the patent based on the R/3 product itself. Versata sought additional discovery to obtain a working copy of the R/3 product because SAP's expert made several statements concerning its operation that lacked any citation to the product's manuals.
The PTAB denied Versata's request for additional discovery. First, it explained that a party to a CBM review is entitled only to the discovery authorized by 37 C.F.R. § 42.51, which is less than that available in district court litigation. Next, the PTAB evaluated whether Versata demonstrated both:
  • Good cause why the discovery is needed. The PTAB considered various factors to evaluate the good cause requirement, including:
    • whether there is more than a possibility and mere allegation of finding something useful;
    • Versata's ability to generate equivalent information by other means; and
    • whether the discovery requests are easily understandable and not overly burdensome to answer.
  • That the evidence sought is directly relevant to either party's factual assertions. The PTAB found that the additional discovery sought by Versata was not relevant because:
    • SAP's expert never stated that he relied on the software product itself; and
    • SAP's petition relied on the R/3 software manuals, not the product.
(37 C.F.R. § 42.51.)
The PTAB was unpersuaded by Versata's argument that SAP's expert must have reviewed the R/3 product because his declaration lacks support for several remarks concerning the product's operation. It also noted that Versata could cross-examine SAP's expert to determine whether his testimony is supported by the R/3 software manuals or extrinsic evidence concerning the actual software product.