Chicago Mercantile Exchange, Inc.v.5th Market Inc.

Patent Trial and Appeal BoardMar 10, 2016

09695828 (P.T.A.B. Mar. 10, 2016)

Trials@uspto.gov Paper No. 42 571-272-7822 Entered: March 10, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ CHICAGO MERCANTILE EXCHANGE, INC., Petitioner, v. 5th MARKET, INC., Patent Owner. _______________ Case CBM2015-00061 Patent 7,024,387 B1 _______________ Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and GEORGIANNA W. BRADEN, Administrative Patent Judges. ZECHER, Administrative Patent Judge. JUDGMENT FINAL WRITTEN DECISION 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73(b) CBM2015-00061 Patent 7,024,387 B1 2 I. BACKGROUND On January 14, 2015, Chicago Mercantile Exchange, Incorporated (“CME”) filed a Petition requesting a review under the transitional program for covered business method patents of claims 1 and 2 of U.S. Patent No. 7,024,387 B1 (“the ’387 patent,” Ex. 1001). Paper 1. Patent Owner, 5th Market, Incorporated (“5th Market”), timely filed a Preliminary Response. Paper 8. On July 16, 2015, we instituted this covered business method patent review proceeding as to claims 1 and 2 of the ’387 patent. Paper 9. On October 5, 2015, 5th Market filed a Patent Owner’s Response to the Petition (Paper 18), along with a Motion to Amend (Paper 19). On December 21, 2015, CME filed a Reply to the Patent Owner’s Response (Paper 28), and an Opposition to the Motion to Amend (Paper 29). On February 5, 2016, 5th Market filed a Reply to the Opposition to the Motion to Amend (Paper 37). The parties requested oral argument (Papers 38, 39), which was scheduled for March 16, 2016 (Paper 10, 6). On February 19, 2016, we granted the parties’ requests for oral argument (Paper 40). On February 24, 2016, the parties sent a joint email correspondence to the Board indicating that they had reached a settlement in principle and, based on the agreed upon terms, 5th Market will submit a request for adverse judgment under 37 C.F.R. § 42.73(b). On March 8, 2016, 5th Market filed a Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)(2) requesting cancellation of claims 1 and 2 of the ’387 patent. Paper 41 (“Req.”). CBM2015-00061 Patent 7,024,387 B1 3 II. DISCUSSION 5th Market requests that we cancel claims 1 and 2 of the ’387 patent, and that we enter adverse judgment against it in this proceeding under 37 C.F.R. § 42.73(b)(2). Req. 2. Based on the joint email correspondence dated February 24, 2016, we presume that CME does not oppose 5th Market’s request for adverse judgment. A party may request entry of adverse judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include, among other things, cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Under the circumstances presented here, we grant 5th Market’s request for adverse judgment. III. ORDER In consideration of the foregoing, it is: ORDERED that 5th Market’s Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)(2) (Paper 41) is GRANTED; FURTHER ORDERED that judgment is entered against 5th Market with respect to claims 1 and 2 of the ’387 patent; FURTHER ORDERED that claims 1 and 2 of the ’387 patent are cancelled;1 1 See 37 C.F.R. § 42.80 (indicating that after the Board issues a final written decision in a covered business method patent review proceeding, the Office will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable). CBM2015-00061 Patent 7,024,387 B1 4 FURTHER ORDERED that the oral argument scheduled for March 16, 2016, is no longer necessary and, therefore, is cancelled; and FURTHER ORDERED that, because this is a Final Written Decision, parties to this proceeding seeking judicial review of our decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. CBM2015-00061 Patent 7,024,387 B1 5 For PETITIONER: Erika H. Arner Timothy P. McAnulty Justin Loffredo Finnegan, Henderson, Farabow, Garrett & Dunner, LLP erika.arner@finnegan.com timothy.mcanulty@finnegan.com justin.loffredo@finnegan.com Matthew J. Kelly Chicago Mercantile Exchange, Inc. Matthew.Kelly@cmegroup.com For PATENT OWNER: D. Richard Anderson George S. Dolina Birch, Stewart, Kolasch & Birch, LLP dra@bskb.com gsd@bskb.com J. Gregory Whitehair The Whitehair Law Firm, LLC jgw@whitehairlaw.com

Chicago Mercantile Exchange, Inc. v. 5th Market Inc.