Takeaway: The Board did not grant additional discovery to obtain a working version of the software product where the ground of unpatentability was based on the software manuals for the software product.

In its Decision, the Board denied Patent Owner’s request for additional discovery. Patent Owner requested additional discovery to obtain an installable and working version of the software product that is described in the printed publication software manuals asserted by Petitioner to anticipate claims at issue in the CBM proceeding.

A party seeking discovery beyond what is permitted expressly by rule must show “good cause as to why the discovery is needed” and demonstrate that the evidence sought is “directly related to factual assertions advanced by either party in the proceeding.” 37 C.F.R. §§ 42.51(b)(2)(i), 42.224. Patent Owner asserted that Petitioner’s expert’s testimony about the operation and use of the software relied on the actual software, and did not provide any citation or support from the software manuals. The Board disagreed with Patent Owner that the actual software product was relevant, because Petitioner challenged the ’400 Patent based on the software manuals and not the actual software. Further, Petitioner averred that the expert never accessed or reviewed the software product in preparing his testimony. Thus, the Board determined that the actual software product is not necessary for Patent Owner to evaluate the testimony and to cross-examine Petitioner’s expert.

SAP America, Inc. v. Versata Development Group, Inc., CBM2013-00042
Paper 32: Decision on Patent Owner’s Motion for Additional Discovery
Dated: July 10, 2014
Patent 5,878,400
Before: Michael P. Tierney, Rama G. Elluru and Trevor M. Jefferson
Written by: Jefferson