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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`INDEED, INC., MONSTER WORLDWIDE, INC., and
`THELADDERS.COM, INC.
`Petitioner
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`v.
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`CAREER DESTINATION DEVELOPMENT, LLC
`Patent Owner
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`________________
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`Case CBM2014-00077
`Patent 7,424,438
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`_______________
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`Filed: February 12, 2014
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 327(a) and 37 CFR § 42.74(a)
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`INTRODUCTION
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`Indeed, Inc., Monster Worldwide, Inc., and Career Destination Devel-
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`opment, LLC hereby file this Motion to Terminate these proceedings pursuant to
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`35 U.S.C. 327(a) and 37 CFR § 42.74(a). Pursuant to 35 U.S.C. 327(b) and 37
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`CFR § 42.74(b), the parties submit a true and correct copy of their written settle-
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`ment agreements, made in connection with the termination of the instant proceed-
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`ing, attached as Exhibits 2019-2021. The parties have settled these matters and the
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`related cases pending in the United States District Court for the District of Kansas
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`has been dismissed with prejudice. Exhibits 2022-2023. In addition, litigation on
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`a related patent against TheLadders.Com, Inc. has also been dismissed with preju-
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`dice. With the dismissals of the lawsuits by Career Destination, LLC against In-
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`deed, Inc., Monster Worldwide and The Ladders.Com, Inc., there are presently no
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`other litigations pending based on the patent at issue in these proceedings.
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`On December 3, 2014, a conference call was held between counsel for
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`the respective parties and Judges Medley, Petravick, and Busch at the request of
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`the Board. The Board issued an order authorizing the parties to file a motion to
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`terminate this proceeding (Paper 15, p. 4).
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`SETTLEMENT AND STIPULATION OF DUE DATES
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`The parties began settlement discussions in October, and culminated
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`in the parties agreeing to the Settlement Agreements (Exs. 2001-2003) on Novem-
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`ber 17, 2014, before Patent Owner’s response date of November 18, 2014. The
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`Settlement Agreements were executed by Patent Owner and Petitioner Indeed on
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`November 18, 2014, Petitioner Monster on November 19, 2014, and Petitioner
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`TheLadders.Com on November 20, 2014. The parties promptly filed joint stipula-
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`tions of dismissal in the United States District Court for the District of Kansas
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`(Exs. 2004-2006), and with the Board. However, because the parties did not pre-
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`viously request permission to file the Joint Motion to Dismiss from the Board, their
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`motion was denied and the motions expunged.
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`Although trial has been instituted in the instant proceedings, it is still
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`in the preliminary stage of the proceedings. As the board noted during the tele-
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`phone conference on December 3, 2014, Patent Owner has not filed his response
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`and the date has passed. However, the parties have stipulated to extending the
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`dates and the Patent Owner will be requesting to file a motion with the Board to
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`reset Due Dates 1-5.
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`Patent Owner notes that in the Scheduling Order, Due Dates 1-5 may
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`be modified by the parties by stipulation, and the notice of stipulation must be
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`promptly filed. No definition of “promptly” is provided by the Rules or in the
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`Scheduling Order. Further, Patent Owner is aware of no provision of 37 C.F.R.
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`§42 et seq. requiring that a notice to extend a Due Date be filed with the Board be-
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`fore the due date that is being modified.
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`Patent Owner submits that had the parties filed a stipulation modify-
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`ing the Due Dates on November 26, 2014 when the first motion to terminate was
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`filed, it would have been prompt as required. However, because the parties had
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`settled these matters, filing a stipulation adjusting the due dates would have been
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`superfluous and a waste of resources.
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`Further, Patent Owner submits that filing a stipulation modifying the
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`Due Dates within 15 days is also reasonably prompt, as requested by the Patent
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`Owner on the telephone conference with the Board on December 3, 2014. Rather
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`than spend time preparing and filing a stipulated notice modifying these due dates,
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`the parties were diligently working on the precise wording of the Settlement
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`Agreements (Exs. 2001-2003). Patent Owner reasonably and in good faith be-
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`lieved that it was not necessary the file a stipulation modifying the Due Dates once
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`the settlement agreements were signed.
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`TERMINATION OF PROCEEDINGS
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`Although the Board is not a party to the settlement, and may identify
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`independently any question of patentability pursuant to 37 C.F.R. § 42.74(a), the
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`Board generally expects that a proceeding will terminate after filing of a settlement
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`agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768
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`(Aug. 14, 2012). Patent Owner believes that it is in the best interest of all parties
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`and the Board to terminate these proceedings with respect to the Patent Owner. If
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`the proceeding is not terminated, the Board will expend time and resources consid-
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`ering Patent Owner’s request to modify Due Dates 1-5 in each of the proceedings
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`CBM2014-00068, -00069, -00070, and -00077. If the dates are modified upon a
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`showing of good cause or upon a Board decision that consideration on the merits
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`would be in the interest of justice, then because Petitioners will no longer partici-
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`pate in these proceedings, Petitioners will not file a reply to Patent Owner’s re-
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`sponse, or any motion to amend the claims. Petitioners will not be conducting any
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`cross-examination of Patent Owner’s witnesses. The Board would then be re-
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`quired to prepare a final decision.
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`Patent Owner believes that good cause may be shown because the set-
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`tlement agreements were approved before DUE DATE 1. The parties agreed to
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`prepare and file the Motion to Terminate (Paper 13, expunged) prior to expiration
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`of DUE DATE 1. Patent Owner reasonably and in good faith did not believe that it
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`was necessary to file a stipulation modifying the Due Dates if the cases had been
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`settled. Patent Owner reasonably and in good faith did not believe that it was nec-
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`essary to file a stipulation modifying the Due Dates before DUE DATE 1 because
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`the stipulation is a notice to the Board and thus did not require Board approval be-
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`fore filing. Patent Owner reasonably and in good faith did not believe that it was
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`necessary to file a stipulation modifying the Due Dates before DUE DATE 1 as
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`long as the stipulation was filed promptly. Patent Owner reasonably and in good
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`faith believed that if it was necessary to file a stipulation modifying the Due Dates,
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`if the stipulation was filed within 15 days after DUE DATE 1, it would still be
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`considered promptly filed. Finally, termination of these proceedings may avoid
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`any post-decision proceedings.
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`CONCLUSION
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`Accordingly, the parties respectfully request that the instant proceed-
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`ings be terminated.
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`Dated: December 10, 2014
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`GIBSON, DUNN & CRUTCHER LLP
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`By: /s/ Brian M. Buroker
`Brian M. Buroker (Reg. No. 39125)
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: 202.955.8500
`Facsimile: 202.467.0539
`BBuroker@gibsondunn.com
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`Attorney for Petitioners
`Indeed, Inc. and Monster Worldwide, Inc.
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`ERICKSON KERNELL DERUSSEAU
`& KLEYPAS, LLC
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`By: /s/ James J. Kernell
`James J. Kernell (Reg. No. 42720)
`8900 State Line Road, Suite 500
`Leawood, KS 66206
`Telephone: 913.549.4700
`Facsimile: 913.549.4646
`jjk@kcpatentlaw.com
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`Attorney for Patent Owner
`Career Destination Development, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify this 10th day of December 2014, that the foregoing
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`Joint Motion to Terminate has been served electronically through the Patent Trial
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`and Appeals Board’s Patent Review Processing System (PRPS) upon the lead and
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`back-up counsel for the Petitioner, BRIAN M. BUROKER and PETER WEIN-
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`BERG of Gibson Dunn & Crutcher, LLP, 1050 Connecticut Avenue, N.W., Wash-
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`ington, D.C. 20036; JUSTIN F. BOYCE of Dechert LLP, 2440 West El Camino
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`Real, Suite 700, Mountain View, California 94040; and JEFFREY B. PLIES of
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`Dechert LLP, 300 West 6th Street, Suite 2010, Austin, Texas 78701.
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`/s/ James J. Kernell
`Attorney for Patent Owner
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