Paper 52
`Entered: November 24, 2014
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SALESFORCE.COM, INC.,
`Petitioner,
`
`v.
`
`VIRTUALAGILITY, INC.,
`Patent Owner.
`_______________
`
`Case CBM2013-00024
`Patent 8,095,413 B1
`_______________
`
`
`Before JAMESON LEE, GEORGIANNA W. BRADEN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Denying Authorization for Motion
`to Vacate Final Written Decision
`37 C.F.R. § 42.5
`
`
`
`
`
`
`

`

`Case CBM2013-00024
`Patent 8,095,413 B1
`
`
`Introduction
`
`
`
`On May 24, 2013, Petitioner filed a petition for inter partes review of U.S.
`
`Patent No. 8,095,413 B1 (“the ’413 patent”). Paper 4. We instituted trial on
`
`November 19, 2013. Paper 16. Patent Owner filed its Patent Owner Response on
`
`January 28, 2014. Paper 25. Petitioner then filed its Reply on April 11, 2014.
`
`Paper 29. Oral argument was held on July 14, 2014.
`
`
`
`A Final Written Decision was rendered on September 16, 2014, in which we
`
`held that Petitioner has proven, by a preponderance of the evidence, that claims 1–
`
`21 of the ’413 patent are unpatentable. Paper 47. On November 18, 2014, Patent
`
`Owner filed a Notice of Appeal to the Court of Appeals for the Federal Circuit.
`
`Paper 49. Also on November 18, 2014, the parties filed a Joint Motion to File
`
`Settlement Agreement as Confidential Business Information. Paper 50.
`
`
`
`In a joint conference call held on November 21, 2014, Patent Owner
`
`requests authorization to file a Motion to Vacate the Final Written Decision and to
`
`Terminate the Proceeding after the Final Written decision has been Vacated. For
`
`reasons discussed below, the request is denied.
`
`Discussion
`
`
`
`During the conference call, counsel for Patent Owner explained that its
`
`request is based on Salesforce’s “abandonment” of this proceeding. Counsel for
`
`Patent Owner points to the following language in the parties’ Joint Motion to File
`
`Settlement Agreement as Confidential Business Information:
`
`Pursuant to agreement between the parties, Petitioner salesforce.com
`will take no further action in this proceeding and will not participate
`in any subsequent appeal.
`
`Paper 50, 1.
`
` 2
`
`
`
`
`
`

`

`Case CBM2013-00024
`Patent 8,095,413 B1
`
`
`
`
`At this stage of the proceeding, where Petitioner already has proven by a
`
`preponderance of the evidence that claims 1–21 of the ’413 patent are
`
`unpatentable, and where a Final Written Decision already has been rendered, lack
`
`of further participation by Petitioner in this proceeding and in any subsequent
`
`appeal is inconsequential to the merits or legitimacy of the Final Written Decision.
`
`Such “abandonment,” if even appropriate to be referred to as “abandonment,” does
`
`not undo the work Petitioner already has done in completing trial and obtaining an
`
`adverse judgment against Patent Owner. No more participation by Petitioner is
`
`either necessary or required. The claims already have been proven unpatentable.
`
`
`
`We disagree with Patent Owner’s characterization that trial before the Board
`
`is not yet complete. Patent Owner’s rationale is this: (1) a covered business
`
`method review is a trial per 37 C.F.R. § 42.300; (2) a trial is a contested matter per
`
`37 C.F.R. § 42.2; and (3) because Patent Owner is appealing the Board’s Final
`
`Written Decision, the matter remains contested, and that means trial is not yet
`
`complete. Appellate review, however, is not a part of the trial before the Board.
`
`Trial before the Board is complete when the Final Written Decision was entered.
`
`
`
`We note 35 U.S.C. § 327(a), which applies to covered business method
`
`reviews, under which the Board may continue to completion of trial to render
`
`judgment even if the parties have settled and the proceeding is terminated with
`
`respect to each petitioner. If the Board can proceed to issuance of a Final Written
`
`Decision despite settlement between the parties and termination of the proceeding
`
`with respect to each petitioner, an already issued Final Written Decision should not
`
`be vacated based on settlement between the parties.
`
`
`
`During the conference call, counsel for Patent Owner acknowledged that the
`
`Board must take into account the public’s interest as well. According to Patent
`
`Owner, however, any public interest is tied to the existence of an unresolved
`
` 3
`
`
`
`
`
`

`

`Case CBM2013-00024
`Patent 8,095,413 B1
`
`
`infringement suit between the parties, because it is a precondition to the filing of a
`
`covered business method patent petition that the petitioner has been sued for or
`
`charged with infringement of the involved patent. Under that theory, if the parties
`
`have settled, no public interest remains. Patent Owner’s position is unduly
`
`restrictive.
`
`
`
`There is “a strong public interest in the finality of judgments in patent
`
`litigation.” Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 100 (1993).
`
`Here, the public interest lies in not having claims which have been proven
`
`unpatentable remain in an issued patent, whether or not all disputes between two
`
`parties to a law suit with regard to that patent have been resolved. In that regard,
`
`we note also the following statement from the Supreme Court:
`
`Judicial precedents are presumptively correct and valuable to the legal
`community as a whole. They are not merely the property of private
`litigants and should stand unless a court concludes that the public
`interest would be served by a vacatur.
`
`U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18, 26 (1994)
`
`(citation omitted).
`
`Conclusion
`
`
`
`The alleged “abandonment” fails to justify vacating the Final Written
`
`Decision.
`
`It is
`
`Order
`
`ORDERED that Patent Owner is not authorized to file a Motion to Vacate
`
`
`
`
`
`the Final Written Decision and to Terminate the Proceeding after the Final
`
`Written Decision has been Vacated.
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case CBM2013-00024
`Patent 8,095,413 B1
`
`
`For PETITIONER:
`
`Michael Rosato
`Brian Range
`Jose Villarreal
`mrosato@wsgr.com
`brange@wsgr.com
`jvillarreal@wsgr.com
`
`For PATENT OWNER
`
`Gregory Gonsalves
`Jay Kesan
`gonsalves@gonsalveslawfirm.com
`jay@jaykesan.com
`
`
` 5
`
`
`
`
`
`