Even though the Rehearing Request filed by Versata last week is confidential, we can glean some insight about what it contained based on the publicly available documents of record. Today the PTAB authorized SAP to file its motion to oppose Versata’s Rehearing Request, stating:
Patent owner Versata filed a motion for rehearing [ ] of the Board’s Final Written Decision [ ]. Versata’s motion raises at least two issues that SAP has not yet had an opportunity to brief. Specifically, SAP has not yet had an opportunity to brief how the following two Federal Circuit’s decisions affect this proceeding: Ultramercial, Inc. v. Hulu, LLC, 107 USPQ2d 1193 (Fed. Cir. 2013) and Versata Software Inc. v. SAP America Inc., 106 USPQ2d 1649 (Fed. Cir. 2013).
The Board authorizes SAP to file an opposition to Versata’s motion for rehearing. The opposition is limited to addressing the impact, if any, the two recent Federal Circuit decisions have on the Board’s Final Written Decision. SAP’s opposition is due no later than July 18, 2013.
The Ultramercial case resulted in a reversal of a district court holding of invalidity under 35 U.S.C. § 101. You may recall that Ultramercial’s U.S. 7,346,545 patent (the ‘545 patent) claims relate to a method for distributing copyrighted products over the Internet where the the consumer received a copyrighted product for free in exchange for viewing an advertisement (and the advertiser pays for the copyrighted content). The district court granted Wildtangent’s motion to dismiss pursuant to FRCP 12(b)(6), asserting that the method claims of the ‘545 patent did not claim statutory subject matter, but the Federal Circuit reversed the district court holding the subject matter patent-eligible under 35 U.S.C. § 101. Therefore, it is not surprising that Versata cited Ultramercial in its Rehearing Request.
Of course, it is also not surprising that Versata cited decisions from its parallel Federal Circuit appeal given the fact that the Federal Circuit upheld Versata’s district court damages decision and recently denied stay of the Federal Circuit appeal in which the Federal Circuit recently remanded the case to the district court for correction of the injunction.
SAP has until July 18, 2013 to file its opposition; however, like Versata’s Rehearing Request, SAP’s opposition brief may not be publicly accessible if it addresses protected information from Versata’s Rehearing Request.