Google Inc.v.INVENTOR HOLDINGS, LLCDownload PDFPatent Trial and Appeal BoardNov 17, 201512472149 (P.T.A.B. Nov. 17, 2015) Copy Citation Trials@uspto.gov Paper 17 571-272-7822 Entered: November 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE INC., Petitioner, v. INVENTOR HOLDINGS, LLC, Patent Owner. ____________ Case IPR2015-00724 Patent 8,558,921 B2 ____________ Before BART A. GERSTENBLITH, MITCHELL G. WEATHERLY, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. ORDER Termination of the Proceeding 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 47.74 Pursuant to our authorization, the parties filed a joint Motion to Terminate this proceeding. Paper 16. The parties assert that they “have settled their dispute and agreed to terminate this inter partes review and the IPR2015-00724 Patent 8,558,921 B2 2 parties’ related district court litigation.” Id. at 1. The parties have submitted a copy of a written settlement agreement between them as Exhibit 1033, and represent that it is “a true and correct copy” and that “[t]here are no collateral agreements referred to in the parties’ settlement agreement.” Id. The parties also “jointly request to file their settlement agreement, including the entirety of Exhibit 1033 to the Joint Motion to Terminate Proceeding, as business confidential information, and that it be kept separate from the file of the involved patent (U.S. Patent No. 8,558,921).” Paper 15. “An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). The Office has not yet decided the merits of the proceeding, which remains at an early stage. We determine that good cause exists to terminate this proceeding with respect to all parties without rendering a final written decision. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. 35 U.S.C. § 317(b). After reviewing the parties’ settlement agreement, we find that the settlement agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the settlement agreement as business confidential information pursuant to 35 U.S.C. § 317(b). IPR2015-00724 Patent 8,558,921 B2 3 It is ORDERED that the joint Motion to Terminate (Paper 16) is granted; FURTHER ORDERED that this proceeding is hereby terminated as to both Petitioner and Patent Owner; FURTHER ORDERED that the joint Motion to File Settlement Agreement as Business Confidential Information (Paper 15) is granted; and FURTHER ORDERED that the filed settlement agreement (Ex. 1033) be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as “Parties and Board Only” in PRPS. IPR2015-00724 Patent 8,558,921 B2 4 PETITIONER: ANDREW TRASK DAVID KRINSKY atrask@wc.com dkrinsky@wc.com PATENT OWNER: TAREK FAHMI tarek.fahmi@ascendalaw.com Copy with citationCopy as parenthetical citation