`Trials@uspto.gov
`571-272-7822 Entered: August 12, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GROUPON, INC.,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00090
`Patent 5,805,702
`____________
`
`
`
`Before SALLY C. MEDLEY and MIRIAM L. QUINN
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`Order
`Conduct of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`On August 5, 2014, we authorized the parties to file a joint motion to
`terminate the proceeding pursuant to 35 U.S.C. § 327, and explained that the
`Board expects that a proceeding will terminate after the filing of a settlement
`agreement pursuant to 35 U.S.C. § 327. Paper 7, 1-2. On August 7, 2014,
`
`
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`Case CBM2014-00090
`Patent 5,805,702
`
`and pursuant to 35 U.S.C. § 327 and 37 C.F.R. § 42.74, the parties filed a
`joint motion to terminate the proceeding. Paper 8. In the joint motion, the
`parties represent that Petitioner and Patent Owner have settled their dispute
`with respect to the involved patent. According to the motion, the parties
`jointly filed a stipulation of dismissal in the related district court case,
`Maxim Integrated Products, Inc. v. Groupon, Inc., No. 2:12-cv-881-JFC
`(W.D. Pa.). Ex. 1012. The parties represent that the joint stipulation
`dismisses all claims against Petitioner relating to the involved patent and
`serves as the written agreement between the parties to settle their dispute.
`Paper 8, 1. On August 1, 2014, the related case was dismissed with
`prejudice. Ex. 1013. Lastly, the motion indicates that there is no other
`pending litigation based on the involved patent.
`The parties jointly represent, on page 1 of the motion, that the “joint
`stipulation serves as the written agreement between the parties to settle their
`dispute regarding the ’702 patent.” This “settlement agreement” is
`somewhat ambiguous, and not the typical settlement agreement that is
`submitted in compliance with 35 U.S.C. § 327(b).
`The parties are reminded that any agreement or understanding
`between the patent owner and the petitioner, including any collateral
`agreements referred to in such agreement or understanding, made in
`connection with, or in contemplation of, the termination of the proceeding
`shall be in writing, and a true copy of that agreement or understanding shall
`be filed in the Office. 35 U.S.C. § 327(b). In order to ensure compliance
`with 35 U.S.C. § 327(b), and based on the facts of this proceeding, the
`parties are required to certify in writing that there are no other written or oral
`agreements or understandings, including any collateral agreements, between
`
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`2
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`Case CBM2014-00090
`Patent 5,805,702
`
`them, including but not limited to licenses, covenants not to sue,
`confidentiality agreements, payment agreements, or other agreements of any
`kind, that are made in connection with, or in contemplation of, the
`termination of the instant proceeding. To the extent that there are other
`agreements as outlined immediately above, the parties shall file such
`agreements and may request that any such agreement be treated as business
`confidential information and be kept separate from the files of the involved
`patent. 37 C.F.R. § 42.74(c).
`If the parties do not so certify, or do not file a settlement agreement as
`outlined in this order, the parties must arrange a conference call with the
`Board to discuss termination of this proceeding.
`It is
`ORDERED that the parties shall, no later than August 18, 2014,
`certify in writing that there are no other written or oral agreements or
`understandings, including any collateral agreements, between them,
`including but not limited to licenses, covenants not to sue, confidentiality
`agreements, payment agreements, or other agreements of any kind, that are
`made in connection with, or in contemplation of, the termination of the
`instant proceeding; and
`FURTHER ORDERED that to the extent that there are other
`agreements as outlined immediately above, the parties shall file such
`agreements no later than August 18, 2014, and may request that any such
`agreement be treated as business confidential information and be kept
`separate from the files of the involved patent; and
`FURTHER ORDERED that if the parties do not certify, or file a
`settlement agreement in accordance with this order, the parties must arrange
`
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`Case CBM2014-00090
`Patent 5,805,702
`
`a conference call with the Board to discuss termination of this proceeding.
`
`
`
`PETITIONER:
`
`James C. Yoon
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI P.C.
`groupon-maxim@wsgr.com
`margenti@wsgr.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`weatherwax@glwllp.com
`hendifar@glwllp.com
`
`
`
`
`
`
`
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`4
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`
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