- PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - PTAB · Sep 24, 2015 · IPR2015-01382 · APJ Michael R Zecher · IPR · Order
The Board granted the renewed joint motion to terminate and terminated the proceeding before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. DISCUSSION On September 18, 2015, the parties filed a Joint Motion to Terminate this proceeding (Paper 9), a copy of the parties’ settlement agreement (Ex. 1009), and a Motion to Seal (Paper 8) that includes a request to treat the settlement agreement as business confidential information under 37 C.F.R. § 42.74(c). After reviewing the settlement agreement submitted by the parties, we informed the parties via email correspondence on September 21, 2015, that these papers were insufficient because the settlement agreement was redacted. See 35 U.S.C. § 317(b) (requiring a “true copy” of a settlement agreement be filed in the Office before the termination of an inter partes review); see also APTwater, Inc. v. ThinkVillage- Kerfoot, LLC, Case IPR2014-00132, slip op. at 2 (PTAB June 10, 2014) (Paper 17) (“A redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.”). We instructed the parties to file a non-redacted version of the settlement agreement. On September 21, 2015, the parties complied with our instructions by filing a renewed Joint Motion to Terminate this proceeding (Paper 10), and a true copy of the parties’ settlement agreement (Ex. 1010).1 The renewed Joint Motion to Terminate this proceeding also includes a joint request to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 10, 4–5.” slip op. at 2
NonePatents in suitUS 6,578,086 - 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 · 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 - PTAB · Jun 4, 2014 · IPR2013-00369 · APJ Michael R Zecher · IPR · Final written decision
The Board granted the parties’ joint motion and terminated the trial without deciding the patentability of claims 1–13 and 22–27.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On June 2, 2014, the parties filed a joint motion to terminate this proceeding (Paper 55), along with a true copy of their written settlement agreement (Ex. 2100). The parties indicated in their joint motion that termination of this proceeding is appropriate because they settled their dispute involving U.S. Patent No. 7,107,612 B1 (“the ’612 patent”). Paper 55, 2. The parties also indicated that they have resolved the related district court case involving the ’612 patent. Id. The parties represented that there are no other pending proceedings involving the ’612 patent. Id.” slip op. at 2
NonePatents in suitUS 7,107,612 - PTAB · Jun 4, 2014 · IPR2013-00466 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the trial as to claims 1–23 after settlement, without deciding patentability.
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 patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” We instituted a trial in this proceeding as to claims 1-23 of the ’752 patent (Paper 17) on January 28, 2014, but we have not decided the merits of this proceeding.” slip op. at 2
NonePatents in suitUS 7,734,752 - PTAB · Apr 30, 2014 · IPR2013-00628 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the trial concerning claims 1 and 4-7 after settlement, without a final written decision on patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On April 18, 2014, the parties filed a joint motion to terminate this proceeding (Paper 12), as well as a joint request (Paper 13) to have their settlement agreement treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties also filed a true copy of their written settlement agreement. Ex. 4001. The parties indicated in their joint motion that termination of this proceeding is appropriate because they have reached an agreement regarding their dispute with respect to U.S. Patent No. 5,527,343(“the ’343 patent”). Paper 12, 2. The parties indicated that the related district court litigation involving the ’343 patent was dismissed without prejudice. Id. The parties identified one other related district court litigation involving the ’343 patent that is still pending. Id. at 3.” slip op. at 2
NonePatents in suitUS 5,527,343
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.