Xerox Corp.v.RR Donnelley & Sons Co.

Patent Trial and Appeal BoardAug 29, 2014

08500011 (P.T.A.B. Aug. 29, 2014)

Trials@uspto.gov Paper 21 Tel: 571-272-7822 Entered: August 29, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ XEROX CORP., Petitioner, v. RR DONNELLEY & SONS CO., Patent Owner. _______________ Case IPR2013-00529, Patent 5,796,411 Case IPR2013-00538, Patent 5,949,4381 _______________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and MIRIAM L. QUINN, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. JUDGMENT Termination of the Proceedings 35 U.S.C. § 317 37 C.F.R. §§ 42.72, 42.73, 42.74 1 This Judgment is entered in each case. The parties are not authorized to use this heading style. Case IPR2013-00529, Patent 5,796,411 Case IPR2013-00538, Patent 5,949,438 2 On August 25, 2014, the parties filed a joint motion to terminate each proceeding, with a true copy of their written settlement agreement, made in connection therewith, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). See IPR2013-00529, Paper 18, Ex. 2007 (settlement agreement).2 The parties also filed a related joint motion (Paper 19) requesting that the settlement agreement (Ex. 2007) be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The joint motion to terminate states that the parties jointly request “that the . . . pending inter partes review be terminated with respect to Petitioner.” Paper 18, 1. The joint motion to terminate (with respect to Petitioner) states that “Patent Owner does not request dismissal of the review and requests that these proceedings advance to final written decision after Patent Owner is heard at final argument.” Paper 18, 1. The parties recently adjusted the trial schedule in each case, so that “DUE DATE 2,” specifying the due date for Petitioner’s reply to Patent Owner’s response, is October 6, 2014. See Paper 14 (adjusted trial schedule); Paper 16 (Patent Owner’s response). Petitioner has not filed such a reply. As our order authorizing the joint motion to terminate notes, “[g]enerally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.” See Paper 17, 1 (citing Office Patent Trial Practice Guide, 77 Fed. 2 The parties filed substantially the same papers and exhibits in Case IPR2014- 00538, raising the same issue in each case. See id., Papers 17, 18, Ex. 2005. Unless otherwise noted, citations hereinafter refer to representative Case IPR2013- 00529. Case IPR2013-00529, Patent 5,796,411 Case IPR2013-00538, Patent 5,949,438 3 Reg. 48,756, 48,768 (Aug. 14, 2012)). The Trial Practice Guide also states, in an introductory “SUMMARY,” that “[t]he patent trial regulations lay out a framework for conducting the proceedings aimed at streamlining and converging issues for decision. In doing so, the Office’s goal is to conduct proceedings in a timely, fair, and efficient manner.” 77 Fed. Reg. at 48,756. The joint motion to terminate with respect to Petitioner does not persuade us that deviating from the general expectation of termination via settlement is warranted in this situation. At this stage in the proceeding, the record lacks full briefing, including Petitioner’s reply, and accordingly lacks “streamlin[ed,] and converg[ed]” issues, as necessary to render a decision in a “timely, fair, and efficient manner.” See id. The motion to terminate also states that on August 22, 2014, a joint stipulation of dismissal, with prejudice, was filed by the parties in “the related lawsuit styled “RR Donnelley & Sons Co. v. Xerox Corp., No. 1:12-cv-06198 (N.D. Ill.) pursuant to the Settlement Agreement.” Paper 18, 2. The parties do not identify any other lawsuits that involve the patents at issue here. Based on the foregoing, the record warrants treating the settlement agreement in each case as business confidential, and entering judgment by terminating each proceeding without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72 (termination), 42.73 (judgment generally), 42.74 (settlement). A judgment “means a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. It is ORDERED that each case, IPR2013-00529, and IPR2013-00538, is terminated; and Case IPR2013-00529, Patent 5,796,411 Case IPR2013-00538, Patent 5,949,438 4 FURTHER ORDERED that the settlement agreement in each case, Exhibit 2007 in IPR2013-00529, and Exhibit 2005 in IPR2013-00538, be treated as business confidential information and 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. § 317(b) and 37 C.F.R. § 42.74(c). FOR PETITIONER: Cyrus A. Morton Ryan M. Schultz Robins, Kaplan, Miller & Ciresi, LLP camorton@rkmc.com rmschultz@rkmc.com FOR PATENT OWNER: Richard McCaulley J. Steven Baughman Ropes & Gray, LLP richard.mccaulley@ropesgray.com steven.baughman@ropesgray.com

Xerox Corp. v. RR Donnelley & Sons Co.