SAP v. Versata (CBM2012-00001, Paper 37): The Scheduling Order for the First CBM Trial

Every instituted AIA trial runs on a scheduling order. SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper 37, entered January 9, 2013, is the order for the first covered business method review. It was among the early orders the Board circulated as representative scheduling orders, and its structure closely tracks the template the Board used in early trials.

An earlier pre-institution order in the same case (Paper 24) is covered separately.

Background

Once review is instituted, the statute requires a final written decision generally within one year (35 U.S.C. § 326(a)(11) for post-grant review, whose procedures applied to CBM reviews). The scheduling order divides that year into fixed steps so each side knows when it may present evidence and argument.

What the order provides

The seven due dates

Due date	Filing	Date set
1	Patent owner response (§ 42.120) and any motion to amend (§ 42.121)	April 4, 2013
2	Petitioner reply and opposition to the motion to amend	July 5, 2013
3	Patent owner reply to the opposition	August 5, 2013
4	Petitioner motion for observation; motions to exclude (§ 42.64(c)); requests for oral argument (§ 42.70(a))	August 26, 2013
5	Patent owner response to observation; oppositions to motions to exclude	September 16, 2013
6	Replies on motions to exclude	September 16, 2013
7	Oral argument	October 1, 2013

If the patent owner chose to file nothing by Due Date 1, it had to arrange a conference call with the parties and the Board.

Stipulated changes

The parties could stipulate to move Due Dates 1 through 3, earlier or later, but not past Due Date 4, and had to promptly file a notice identifying the changed dates. They could not stipulate to change Due Dates 4 through 7. The order warned that changing dates affects other deadlines: objections to evidence and supplemental evidence (§ 42.64(b)), and the timing of cross-examination (§ 42.53(d)(2)).

Cross-examination

Unless the parties agreed otherwise, cross-examination began after supplemental evidence was due and ended at least a week before the filing date of any paper in which the testimony was expected to be used. The Testimony Guidelines appended to the 2012 Trial Practice Guide applied. The order warned that the Board may sanction violations under 37 C.F.R. § 42.12, for example by shifting expenses and fees to a person who impedes a fair examination. See taking a deposition in an IPR or PGR.

Observations on cross-examination

Because no substantive paper was allowed after the petitioner’s reply, the order gave the petitioner a motion for observation to point the Board to relevant cross-examination testimony of a reply witness. Each observation had to be a short paragraph tying precisely identified testimony to a precisely identified argument, and the patent owner’s response had to be equally concise.

Why it matters

The order shows the basic shape of AIA trials that persists today. The patent owner moves first after institution, the petitioner replies, motions to exclude follow, and the hearing comes near the end. It also shows the Board’s firm line on dates. The parties control only the early dates, and only within limits. The Board used the same structure in other early trials, such as CRS v. Frontline, where it refused requests to compress or extend a schedule.

Parts of the template have changed. Later Trial Practice Guide updates, for example, provide for a patent owner sur-reply, which changes how parties get the last word; see getting the last word in PTAB trials. Motion-to-amend procedure has also been revised more than once. Readers should consult the current Trial Practice Guide and scheduling order template.

Later developments

The trial ended in a final written decision holding the claims under review unpatentable under § 101, which the Federal Circuit affirmed in Versata Development Group v. SAP America (Fed. Cir. 2015). The CBM program ended on September 16, 2020.

Key takeaways

• Paper 37 set seven due dates for the first CBM trial, from the patent owner response to oral argument.
• Parties could stipulate to move Due Dates 1–3 (not past Due Date 4) but not Due Dates 4–7.
• Cross-examination windows and the Testimony Guidelines were built into the schedule, with sanctions available.
• Observations let the petitioner flag reply-witness testimony; later guidance changed this part of the template.