SAP America, Inc. v. Versata Development Group, Inc.

CBM2012-00001, Paper No. 24, November 15, 2012

Patent No. 6,553,350

FACTS

During a conference call with all parties and the 3 administrative judges in attendance, patent owner Versata requested additional discovery of three groups of documents produced during a related district court litigation.   The parties previously could not come to an agreement.  First, Versata requested unredacted copies of various expert reports, deposition transcripts, and SAP’s motion for JMOL, where Versata alleged these documents related to issues of validity in the related litigation.  Second, Versata requested production of all appendices and exhibits of all the earlier documents.  Third, Versata requested production of any documents relating to the “R/3” documentation.  Petitioner SAP opposed these requests under lack of relevance and various other grounds.

HOLDING

With respect to the unredacted copies of the specified documents, the Board ordered the documents to be produced once a protective order is entered in this proceeding, as SAP was unable to identify any prejudice to providing the requested documents other than an alleged lack of relevance.

With respect to the appendices and exhibits, the Board requested that Versata contact SAP and identify which specific appendices and exhibits it required and as to their relevancy. If the parties were unable to reach an agreement as to production, only then should they seek the Board’s assistance and have another conference call.

With respect to the “R/3” documentation, the Board denied Versata’s request without prejudice, should the Board institute trial.

TAKEAWAY

The Board seems to require more than a lack of relevancy argument to prevent discovery requests. If the requesting party is able to articulate a coherent reason as to why it is entitled to certain discovery, the party holding the information should be prepared to articulate an equally coherent reason for blocking such a request.  The Board may ask the requesting side to be specific in its request, and may ask the other side as to any prejudice if the motion/request was granted.

 

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