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` Paper 41
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` Entered: October 3, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY ENTERPRISE, INC. and EBAY, INC.,
`Petitioner,
`
`v.
`
`LAWRENCE B. LOCKWOOD,
`Patent Owner.
`____________
`
`Cases CBM2014-00025 (Patent 7,010,508)
`CBM2014-00026 (Patent 5,576,951)1
`____________
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`Petitioner filed petitions for covered business method patent reviews
`of the two involved patents and Patent Owner filed preliminary responses.
`
`
`1 This order addresses similar issues raised in both cases. We exercise
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`CBM2014-00025 (Patent 7,010,508)
`CBM2014-00026 (Patent 5,576,951)
`
`We instituted trials on May 15 and 20, 2014 in CBM2014-00026 and
`CBM2014-00025 respectively.
`On October 2, 2014, the parties informed the Board that the parties
`have reached a settlement agreement. The parties seek authorization from
`the Board to file a joint motion to terminate the proceeding pursuant to
`35 U.S.C. § 327.
`A covered business method patent review has been instituted in each
`case. The Board does not have before it full briefing on the issues raised
`during each trial. Moreover, the Board has not entered a final written
`decision. Generally, 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. 48756, 48768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`Based on the facts of these proceedings, the parties are authorized to,
`and shall file, in addition to the settlement agreement, a joint motion to
`terminate the proceeding briefly explaining why termination is appropriate
`in these cases. The parties also must file, as an exhibit, a true copy of their
`settlement agreement to terminate the proceedings. Any request that the
`agreement be treated as business confidential information and be kept
`separate from the files of the involved patent must be filed with the
`settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G3 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`
`
`
`CBM2014-00025 (Patent 7,010,508)
`CBM2014-00026 (Patent 5,576,951)
`
`their settlement agreement as confidential (e.g., uploading as “Parties and
`Board Only”).
`The joint motion to terminate and the settlement agreement shall be
`filed no later than October 10, 2014.
`Accordingly, it is
`ORDERED that the parties are authorized to file a separate joint
`motion to terminate in each proceeding;
`FURTHER ORDERED that the joint motions are due no later than
`October 10, 2014; and
`FURTHER ORDERED that the joint motions shall be accompanied
`by a true copy of the settlement agreement as required by 37 C.F.R.
`§ 42.74(b);
`FURTHER ORDERED that the parties may request that the
`settlement agreement be treated as business confidential information as
`specified by 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically via the Patent Review Processing System
`(PRPS) in accordance with the instructions provided on the Board’s website
`(e.g., uploading as “Parties and Board Only”); and
`FURTHER ORDERED that the remaining DUE DATES in the
`proceedings are vacated.
`
`
`
`
`
`
`
`
`CBM2014-00025 (Patent 7,010,508)
`CBM2014-00026 (Patent 5,576,951)
`
`
`
`PETITIONER:
`
`Don Daybell
`James Maune
`Orrick, Herrington & Sutcliffe, LLP
`ddaybell@orrick.com
`jmaune@orrick.com
`
`
`PATENT OWNER:
`
`Robert Sterne
`Donald Featherstone
`Jason Eisenberg
`Richard Bemben
`Byron Pickard
`Sterne, Kessler, Goldstein & Fox, PLLC
`rsterne@skgf.com
`don-PTAB@skgf.com
`jasone-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`bpickard-PTAB@skgf.com
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