COMSCORE, INC.v.MOAT, INC.

Patent Trials and Appeals BoardMay 30, 2014

10668476 - (D) (P.T.A.B. May. 30, 2014)

Trials@uspto.gov Paper 20 571-272-7822 Entered: May 30, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ COMSCORE, INC. Petitioner v. MOAT, INC. Patent Owner Case IPR2013-00503 Patent 6,963,826 Before THOMAS L. GIANNETTI, TRENTON A. WARD, and MATTHEW R. CLEMENTS, Administrative Patent Judges. CLEMENTS, Administrative Patent Judge. ORDER Motion to Terminate 37 C.F.R. § 42.72 Case IPR2013-00503 Patent 6,963,826 2 On May 21, 2014, the parties filed a joint motion to terminate the trial proceedings under 35 U.S.C. § 317(a) and to treat the Settlement Agreement attached thereto as Exhibit 1016 as business confidential information under 35 U.S.C. § 317(b) and 37 CFR § 42.74(c). Paper 19. Along with the motion, the parties filed a copy of a document they described as the written settlement agreement. Exhibit 1016. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The parties stated in their motion that they have settled their dispute and have reached agreement to terminate this inter partes review and the co-pending litigation. Paper 19, 2. Furthermore, the joint motion states that the related litigation has been dismissed by agreement of the parties, and that there is no other litigation involving the ’826 patent pending. Id. at 3. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). This proceeding is still in the preliminary stages. The Board is persuaded that, under these circumstances, it is appropriate to Case IPR2013-00503 Patent 6,963,826 3 terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement (Exhibit 1016) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. Case IPR2013-00503 Patent 6,963,826 4 For PETITIONER: W. Karl Renner Kevin E. Greene FISH & RICHARDSON P.C. axf@fr.com IPR30651-0047IP1@fr.com For PATENT OWNER: Louis J. DelJuidice Phoenix S. Pak TROUTMAN SANDERS LLP louis.deljuidice@troutmansanders.com phoenix.pak@troutmansanders.com

COMSCORE, INC. v. MOAT, INC.