Lighthouse Consulting Group LLC

Patent Trials and Appeals BoardNov 5, 2020

CBM2020-00010 (P.T.A.B. Nov. 5, 2020)

Trials@uspto.gov Paper 20 571-272-7822 Entered: November 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FIDELITY INFORMATION SERVICES, LLC, Petitioner, v. LIGHTHOUSE CONSULTING GROUP LLC, Patent Owner. CBM2020-00010 Patent 8,590,940 B2 Before KEVIN F. TURNER, MEREDITH C. PETRAVICK, and JENNIFER S. BISK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. TERMINATION Dismissal After Institution of Trial 37 C.F.R. § 42.72 Authorizing Motion to Expunge Confidential Information 37 C.F.R. § 42.56 Termination of Trial “The Board may terminate a trial without rendering a final written decision, where appropriate.” 37 C.F.R. § 42.72. We terminate this covered business method patent review trial because the Petition is moot due to the CBM2020-00010 Patent 8,590,940 B2 2 entry of adverse judgment in a related inter partes review. The Petition challenges the patentability of claims 1–101 of U.S. Patent No. 8,590,940. Claims 1–10 of U.S. Patent No. 8,590,940 were also challenged in inter partes review, Unified Patent Inc. v. Lighthouse Consulting Grp., LLC, IPR2020-00194. On September 2, 2020, in IPR2020-00194, we entered adverse judgment, under 37 C.F.R. § 42.73(b)(4), against Patent Owner. Claims 1–10 of U.S. Patent No. 8,590,940 B2, thus, have been determined to be unpatentable and will be cancelled. On September 2, 2020, we entered an Order authorizing Petitioner to file a paper explaining why trial should not be terminated. Paper 17. In response, Petitioner stated that it did not oppose termination and asked that we hold termination of this covered business method patent review in abeyance until the period for Patent Owner to appeal in IPR2020-00194 has expired. Paper 18, 1–2. Patent Owner’s period for appeal expired on November 4, 2020, without Patent Owner filing a notice of appeal. See 37 C.F.R. § 90.3(a)(1) (providing 63 days for filing a notice of appeal after the date of a final Board decision). We terminate this covered business method patent review trial. Authorization to File a Motion to Expunge Concurrently with the Petition, Petitioner filed a confidential version of the Petition (Paper 2), confidential Exhibits 1022–1028, and a Motion to Seal (Paper 4). By instituting trial (Paper 14), we granted the Motion to Seal. See 37 C.F.R. § 42.55 (“The institution of the requested trial will constitute a grant of the motion to seal unless otherwise ordered by the 1 Claims 1–10 are all of the claims of U.S. Patent No. 8,590,940 B2. CBM2020-00010 Patent 8,590,940 B2 3 Board.”). Our Rules allow for a party to file a motion to expunge confidential information from the record after the denial of a petition. 37 C.F.R. § 42.56. Petitioner is authorized to file a motion to expunge confidential information from the record pursuant to 37 C.F.R. § 42.56, no more than seven pages, and no later than 14 business days from the date of this order. It is: ORDERED that this covered business method patent review trial is terminated; and FURTHER ORDERED that Petitioner is authorized to file a motion to expunge confidential information from the record pursuant to 37 C.F.R. § 42.56, no more than seven pages, and no later than 14 business days from the date of this order. PETITIONER: Erika Harmon Arner Kevin D. Rodkey Jency J. Mathew FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP erika.arner@finnegan.com kevin.rodkey@finnegan.com jency.mathew@finnegan.com CBM2020-00010 Patent 8,590,940 B2 4 PATENT OWNER: Hao Ni Neal Massand Timothy Wang NI, WANG & MASSAND, PLLC hni@nilawfirm.com nmassand@nilawfirm.com twang@nilawfirm.com