Google Inc.v.INVENTOR HOLDINGS, LLC

Patent Trial and Appeal Board

Nov 17, 2015

12472149 (P.T.A.B. Nov. 17, 2015)

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).

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Patent 8,558,921 B2

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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

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PETITIONER:

ANDREW TRASK
DAVID KRINSKY
atrask@wc.com
dkrinsky@wc.com

PATENT OWNER:

TAREK FAHMI
tarek.fahmi@ascendalaw.com