- PTAB · Mar 6, 2015 · IPR2014-00439 · APJ Matthew R Clements · IPR · Order
The Board granted the parties’ revised joint motion and terminated the proceeding as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“and that, even if the parties agree to settle any issue in a proceeding, the Board may independently determine any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). We have not yet decided the merits of this proceeding. For example, the oral argument has not been held. The Board is persuaded that, under these circumstances, it is appropriate to terminate this proceeding as to both Petitioner and Patent Owner without rendering a final written decision. 37 C.F.R. § 42.72. ORDER Accordingly, it is: ORDERED that the revised joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated as to both Petitioner and Patent Owner; and” slip op. at 3
NonePatents in suitUS 7,365,871 - PTAB · Nov 19, 2014 · IPR2014-00308 · APJ Kristina M Kalan · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition on December 27, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 10, 2014. Patent Owner filed a Patent Owner Response on September 10, 2014, but Petitioner has not yet filed a Reply. This proceeding has not resulted in a final decision on the merits.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of the case, it is appropriate to terminate the proceeding as to both Petitioner and Patent Owner. Therefore, the joint motion to terminate and the joint motion to file the release agreement as business confidential information are granted. Accordingly, it is ORDERED that the joint motion to file the release agreement as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the proceeding is terminated.” slip op. at 3
NonePatents in suitUS 5,825,891 - PTAB · Nov 19, 2014 · IPR2014-00300 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motions and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedOther
“Petitioner filed a Petition on December 26, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 9, 2014. Patent Owner filed a Patent Owner Response on September 10, 2014, but Petitioner has not yet filed a Reply. This proceeding has not resulted in a final decision on the merits.” slip op. at 3
NonePatents in suitUS 7,254,621 - PTAB · Nov 19, 2014 · IPR2014-00299 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motions and terminated the instituted IPR after settlement, before deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n 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.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” SAP America is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Clouding IP as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,925,481 - PTAB · Oct 28, 2014 · IPR2014-00059 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the instituted review as to all parties, and entered judgment after settlement before deciding the merits.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceedings. Id. In their Joint Motions to Terminate, the parties indicate that they have settled all of their disputes involving the Rackspace inter partes reviews, as well as the related district court proceeding styled PersonalWeb Tech. LLC v. Rackspace US, Inc., No. 6-12-cv-00659 (E.D. Tex.). Mot. 1, 4. The parties also indicate that they concurrently filed their Stipulation of Dismissal, as to only the Rackspace Defendants with prejudice, in that related district court proceeding. Id.; Ex. 2019. More importantly, the parties expressly state that “no other disputes between the parties remain,” and “[t]here is no other litigation or dispute in any court or forum involving [Rackspace and PersonalWeb].” Id. at 4. Upon consideration of the facts before us, we determine that it is appropriate to terminate the Rackspace inter partes reviews as to both parties, and enter judgment.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 6,415,280 - PTAB · Oct 28, 2014 · IPR2014-00066 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the Rackspace inter partes reviews as to all parties, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties further argue that maintaining the Rackspace inter partes reviews, after the parties have settled their disputes, would be contrary to public policy and would discourage future settlements by removing a significant motivation for settlement. Mot. 5. In view of the circumstances, we agree. Indeed, there are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 6,928,442 - PTAB · Oct 28, 2014 · IPR2014-00062 · APJ Joni Y Chang · IPR · Order
The Board granted the joint motion and terminated IPR2014-00062 as to all parties after settlement, before deciding the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“reviews, after the parties have settled their disputes, would be contrary to public policy and would discourage future settlements by removing a significant motivation for settlement. Mot. 5. In view of the circumstances, we agree. Indeed, there are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 7,802,310 - PTAB · Oct 28, 2014 · IPR2014-00058 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motions, terminated the Rackspace inter partes reviews as to all parties, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Hosting, Inc. (collectively, “Rackspace”) and Patent Owner PersonalWeb Technologies, LLC and Level 3 Communications (collectively, PersonalWeb) filed a Joint Motion to Terminate in each of the above-identified inter partes reviews (“the Rackspace inter partes reviews”). Paper 34, “Mot.”2 The parties also filed a true copy of their Written Settlement Agreement, made in connection with the termination of the Rackspace inter partes reviews, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Ex. 1014. Additionally, the parties submitted a Joint Request to have their Written Settlement Agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 33. For the reasons set forth below, the Joint Motions to Terminate and the Requests to have their Written Settlement Agreement treated as confidential business information are granted.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“court proceedings involving PersonalWeb and third parties. Mot. 6–7. However, except for EMC Corporation and VMWare, Inc. (collectively “EMC”) and Apple, Inc. (“Apple”), none of the third parties elected to file a Petition for inter partes review within the one-year statutory period under 35 U.S.C. § 315(b). Id. at 7. We note that the termination of the Rackspace inter partes reviews would not affect the inter partes reviews that involve EMC and Apple. We are cognizant that Google, Inc. and YouTube, LLC (collectively “Google”) filed four Petitions—IPR2014-00977, IPR2014- 00978, IPR2014-00979, and IPR2014-00980—and Motions for Joinder with four of the Rackspace inter partes reviews. See, e.g., IPR2014-00977, Paper 3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 3
NonePatents in suitUS 8,099,420 - PTAB · Oct 16, 2014 · CBM2013-00056 · APJ Michael W Kim · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post-grant 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.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 327(a), “[i]f no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(a).” Trulia is the sole petitioner in this review. The Board has discretion to terminate this review with respect to Zillow as Patent Owner.” slip op. at 2
NonePatents in suitUS 7,970,674 - PTAB · Jun 30, 2014 · IPR2014-00354 · APJ William V Saindon · IPR · Order
The Board granted the joint motion to join IPR2014-00354 to IPR2013-00629, terminated IPR2014-00354, and set consolidated filing, schedule, reply, and deposition procedures.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“considers many factors, including: (1) the differences in the grounds asserted in the proceedings; (2) time and cost considerations, including the impact joinder would have on the trial schedule; and (3) how briefing and discovery may be simplified. See Order Authorizing Motion for Joinder (Paper 15) at 4, Kyocera Corp. v. SoftView, LLC., IPR2013-00004 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 7,806,896
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.