MotionPoint Corporationv.TransPerfect Global, Inc.

Patent Trial and Appeal Board

Feb 9, 2016

10313518 (P.T.A.B. Feb. 9, 2016)

Trials@uspto.gov Paper 13
571-272-7822 Entered: February 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

MOTIONPOINT CORP.,
Petitioner,
v.
TRANSPERFECT GLOBAL, INC.,
Patent Owner.

_______________

Case CBM2015-00168 (Patent 6,526,426 B1)
Case CBM2015-00178 (Patent 7,207,005 B2)
_______________

Before JEREMY M. PLENZLER, MIRIAM L. QUINN, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.72 and 35 U.S.C. § 327(a)
CBM2015-00168 (Patent 6,526,426 B1)
CBM2015-00178 (Patent 7,207,005 B2)

2
On February 5, 2016, the parties filed a Joint Motion to Terminate the
instant proceedings pursuant to a settlement agreement. CBM2015-00168,
Paper 13; CBM2015-00178, Paper 11.1 The parties also filed a true copy of
their written settlement agreement, made in connection with the termination
of the instant proceedings, in accordance with 35 U.S.C. § 327(b) and
37 C.F.R. § 42.74(b). Exhibit 2024. Additionally, the parties submitted
Joint Requests to Keep Separate, which request that the settlement
agreement be treated as business confidential information under 35 U.S.C.
§ 327(b) and 37 C.F.R. § 42.74(c). Paper 14.
The instant proceedings are in the preliminary stage. The Board has
not issued a decision determining whether trial will be instituted in
Petitioner’s requests for covered business method review of U.S. Patent
Nos. 6,526,426 B1 and 7,207,005 B2. Further, the parties allege that the
settlement agreement resolves the dispute underlying the instant
proceedings. Paper 13, 1.
Upon consideration of the requests before us, we determine that
terminating the instant proceedings with respect to both Petitioner and Patent
Owner, at this early juncture, promotes efficiency and minimizes
unnecessary costs. Based on the facts of this case, it is appropriate to enter
judgment.2 See 35 U.S.C. § 327(a); 37 C.F.R. § 42.72.
Accordingly, it is:
ORDERED that the joint motions to terminate CBM2015-00168 and
CBM2015-00178 are granted;

1 The parties filed identical papers in the captioned cases. For ease of
reference, this order references the papers filed in CBM2015-00168.
2 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
CBM2015-00168 (Patent 6,526,426 B1)
CBM2015-00178 (Patent 7,207,005 B2)

3
FURTHER ORDERED that the instant proceedings are hereby
terminated as to all parties, including Petitioner and Patent Owner; and
FURTHER ORDERED that the parties’ joint requests that the
settlement agreement be treated as business confidential information, kept
separate from the patent files, and made available only to Federal
Government agencies on written request, or to any person on a showing of
good cause, pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), are
granted.

CBM2015-00168 (Patent 6,526,426 B1)
CBM2015-00178 (Patent 7,207,005 B2)

4

PETITIONER:

Bryan P. Collins
Patrick A. Doody
PILLSBURY WINTHROP SHAW PITTMAN LLP
bryan.collins@pillsburylaw.com
patrick.doody@pillsburylaw.com

PATENT OWNER:

Robert Green Sterne
Jonathan M. Strang
Michelle K. Holoubek
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
rsterne-PTAB@skgf.com
jstrang-PTAB@skgf.com
mholoubek-PTAB@skgf.com