UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EBAY ENTERPRISE, INC. and EBAY INC.
`Petitioners
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`v.
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`LAWRENCE B. LOCKWOOD
`Patent Owner
`__________________
`
`Case CBM2014-00026
`U.S. Patent No. 5,576,951
`____________________
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`JOINT MOTION TO TERMINATE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
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`
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`EBAY ENTERPRISE, INC. and EBAY INC.
`Petitioners
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`__________________
`
`Case CBM2014-00026
`U.S. Patent No. 5,576,951
`____________________
`
`
`JOINT MOTION TO TERMINATE
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Pursuant to 35 U.S.C. § 327(a), 37 C.F.R. § 42.72, and to the Board’s order
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`CBM2014-00026
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`of October 3, 2014 (Paper 40), authorizing this motion, Petitioners eBay
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`Enterprise, Inc. and eBay Inc. (“eBay”) and Patent Owner Lawrence B. Lockwood
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`(“Lockwood”) jointly request the termination of this covered business method
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`review CBM2014-00026 of U.S. Patent No. 5,576,951.
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`The parties have settled their dispute and executed a settlement agreement
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`(Ex. 2030). The Agreement includes provisions to terminate this CBM and the
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`parties’ co-pending covered business method review proceeding CBM2014-00025
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`of U.S. Patent No. 7,010,508.
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`As required under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b), the parties’
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`settlement agreement has been made in writing, and a true and correct copy is
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`being filed concurrently as Exhibit 2030. And pursuant to 37 C.F.R. § 42.74(c), the
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`parties are also filing concurrently herewith a joint request to treat the settlement
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`agreement as business confidential information and keep it separate from the files
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`of this CBM and the involved patent.
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`Termination of this CBM is proper under 35 U.S.C. § 327(a) because the
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`Board has not yet decided the merits of the proceeding. Indeed, the briefing and
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`discovery process in this proceeding has not yet been completed. Lockwood has
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`filed a Patent Owner’s Response to the Petition, but Lockwood’s declarants have
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`CBM2014-00026
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`not been deposed, and eBay has not filed a Reply or any evidence in Reply.
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`Lockwood did not file a Motion to Amend and thus no such motion is pending.
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`There are no motions or other matters outstanding in this CBM.
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`Landmark submits that maintaining this CBM after settlement would
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`discourage future settlements by removing a primary motivation for settlement:
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`eliminating litigation risk by resolving the parties’ disputes and ending the pending
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`proceedings between them. For patent owners, litigation risks include the potential
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`for their patents to be invalidated. If a patent owner knows that a covered business
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`method or inter partes review is likely to continue regardless of settlement, it can
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`create a strong disincentive for the patent owner to settle.
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`There is no litigation pending between Lockwood and eBay relating to the
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`patent that is the subject of this CBM.
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`There is pending litigation relating to the ’951 patent and U.S. Patent No.
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`7,010,508 (the subject of the co-pending CBM 2014-00025) between Lockwood
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`and other parties in the following actions:
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`1. Landmark Technology LLC v. Tempur-Pedic Int’l Inc., (E.D.Tex. May
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`22, 2013) (NO. 6:13CV00416);
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`2. Landmark Technology LLC v. The ADT Corporation, (E.D.Tex. Oct.
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`10, 2013) (NO. 6:13CV00758);
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`- 2 -
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`CBM2014-00026
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`3. Landmark Technology LLC v. The Jones Group, (E.D.Tex. Oct. 10,
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`2013) (NO. 6:13CV00767);
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`4. Landmark Technology LLC v. Hugo Boss USA, Inc., (E.D.Tex. Oct.
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`10, 2013) (NO. 6:13CV00766);
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`5. Landmark Technology LLC v. Briggs & Stratton Corporation,
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`(E.D.Tex. Oct. 10, 2013) (NO. 6:13CV00760); and
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`6. Landmark Technology LLC v. Union Pacific, (E.D.Tex. Jan. 15, 2014)
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`(NO. 6:14CV00026);
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`7. Landmark Technology LLC v. Vitacost.com, Inc., (E.D.Tex. May 22,
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`2013) (NO. 6:13CV00414).
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`All of these litigations are stayed pending the outcome of this CBM and
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`CBM2014-00025.
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`The following active cases are waiting on a scheduling order/conference.
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`These cases involve only related U.S. Patent No. 6,289,319 patent (see Patent
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`Owner’s Updated Mandatory Notices of Nov. 27, 2013, Paper 11, 2 (showing
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`Lockwood’s patent family tree and the relationship of the ’951 and ’319 patents)):
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`1. Landmark Technology LLC v. Abercrombie & Fitch Co., (E.D.Tex.
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`Apr. 4, 2014) (NO. 6:14CV00243);
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`2. Landmark Technology LLC v. Dunkin’ Brands Group, Inc., (E.D.Tex.
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`Apr. 4, 2014) (NO. 6:14CV00247);
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`- 3 -
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`CBM2014-00026
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`3. Landmark Technology LLC v. Boyd Gaming Corp., (E.D.Tex. Apr. 4,
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`2014) (NO. 6:14CV00244);
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`4. Landmark Technology LLC v. Hitachi America Ltd., (E.D.Tex. Apr. 4,
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`2014) (NO. 6:14CV00249); and
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`5. Landmark Technology LLC v. Harley-Davidson, (E.D.Tex. Apr. 4,
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`2014) (NO. 6:14CV00248).
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`There are no other proceedings pending before the Patent and Trademark
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`Office relating to the patent at issue in this CBM.1
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`1 An ex parte reexamination of the ’508 patent (Control No. 90/012,671;
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`Appeal No. 2015-000143) is at the Board for oral hearing and is the only other
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`proceeding pending before the Patent and Trademark Office relating to the patent
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`at issue in this CBM. Lockwood filed a Reply Brief on September 11, 2014. Oral
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`argument was requested, but no date has been set.
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`CBM2014-00026
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`Accordingly, eBay and Lockwood respectfully request that this this CBM
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`proceeding be terminated in its entirety. In any event, eBay respectfully requests
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`that its involvement in this CBM be terminated. The Patent Trial and Appeal Board
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`is hereby authorized to charge any fee deficiency, or credit any overpayment, to
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`Deposit Account No. 19-0036.
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`
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`Dated: October 9, 2014
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`Respectfully submitted,
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`/Donald J. Featherstone/
`Donald J. Featherstone, Reg. No. 33,876
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-2600
`Counsel for Patent Owner
`Lawrence B. Lockwood
`
`
`
`/Don Daybell__________ /
`Don Daybell, Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`(949) 567-6700
`Counsel for Petitioners
`eBay Enterprise, Inc. and eBay Inc.
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`CBM2014-00026
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`CERTIFICATION OF SERVICE
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`
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE were served electronically via e-mail on October 9, 2014, in its
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`entirety on the following:
`
`Lead Counsel
`Don Daybell, Reg. No. 50,877
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Direct: (949) 852-7735
`Fax: (949) 567-6710
`Email: ddaybell@orrick.com
`
`Back-up Counsel
`James Maune, Reg. No. 67,187
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Direct: (949) 852-7721
`Fax: (949) 567-6710
`Email: jmaune@orrick.com
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`Respectfully Submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Donald J. Featherstone/
`
`Donald J. Featherstone, Reg. No. 33,876
`Counsel for Patent Owner – Lawrence B.
`Lockwood
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`
`
`Date: October 9, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005
`(202) 371-2600
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`1914809_2.DOCX
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