Groupon Inc.v.Maxim Integrated Products, Inc.

Patent Trial and Appeal BoardAug 20, 2014

08595014 (P.T.A.B. Aug. 20, 2014)

Trials@uspto.gov Paper No. 12 571-272-7822 Entered: August 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GROUPON, INC., Petitioner, v. MAXIM INTEGRATED PRODUCTS, INC., Patent Owner. ____________ Case CBM2014-00090 Patent 5,805,702 ____________ Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and MIRIAM L. QUINN Administrative Patent Judges. MEDLEY, Administrative Patent Judge. JUDGMENT Termination of the Proceeding 37 C.F.R. Â§ 42.73 On August 7, 2014, and pursuant to 35 U.S.C. Â§ 327 and 37 C.F.R. Â§ 42.74, the parties filed a joint motion to terminate the proceeding. Paper 8. In the joint motion, the parties represent that Petitioner and Patent Owner have settled their dispute with respect to the involved patent. According to Case CBM2014-00090 Patent 5,805,702 2 the motion, the parties jointly filed a stipulation of dismissal in the related district court case, Maxim Integrated Products, Inc. v. Groupon, Inc., No. 2:12-cv-881-JFC (W.D. Pa.). Ex. 1012. The parties represent that the joint stipulation dismisses all claims against Petitioner relating to the involved patent and serves as a written agreement between the parties to settle their dispute. Paper 8, 1. On August 1, 2014, the related case was dismissed with prejudice. Ex. 1013. Lastly, the motion indicates that there is no other pending litigation based on the involved patent. On August 15, 2014, and in response to an order from the Board seeking clarification regarding the joint motion to terminate (Paper 10), the parties filed a written certification. Paper 11. Specifically, the parties certify in writing that there are no other written or oral agreements or understandings, including any collateral agreements, between them, including but not limited to licenses, covenants not to sue, confidentiality agreements, payment agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the instant proceeding. Id. at 1-2. This case is in the preliminary proceeding1 stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is granted. 1 A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted. 37 C.F.R. Â§ 42.2. 2 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. Â§ 42.2. Case CBM2014-00090 Patent 5,805,702 3 Accordingly, it is ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that the proceeding is terminated. PETITIONER: James C. Yoon Matthew A. Argenti WILSON SONSINI GOODRICH & ROSATI P.C. groupon-maxim@wsgr.com margenti@wsgr.com PATENT OWNER: Kenneth J. Weatherwax Parham Hendifar GOLDBERG, LOWENSTEIN & WEATHERWAX LLP weatherwax@glwllp.com hendifar@glwllp.com

Groupon Inc. v. Maxim Integrated Products, Inc.