UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
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`GSN GAMES, INC., f/k/a WORLDWINNER.COM, INC.,
`Petitioner,
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`v.
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`BALLY GAMING, INC.,
`Patent Owner.
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`Case No. CBM2015-00155
`Patent No. 5,816,918
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327(a)
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`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
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`GSN GAMES, INC., f/k/a WORLDWINNER.COM, INC.,
`Petitioner,
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`v.
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`BALLY GAMING, INC.,
`Patent Owner.
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`Case No. CBM2015-00155
`Patent No. 5,816,918
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327(a)
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`Pursuant to 35 U.S.C. § 327(a), Petitioner GSN Games, Inc., f/k/a
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`Worldwinner.com Inc. (“GSN”) and Patent Owner, Bally Gaming Inc. (“Bally”)
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`jointly request termination of the Covered Business Method Review of U.S. Patent
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`No. 5,816,918, Case No. CBM2015-00155.
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`This Joint Motion was authorized by the Board pursuant to an email from
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`Andrew Kellogg, Supervisory Paralegal to Patent Owner and counsel for Petitioner
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`on April 27, 2016.
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`This CBM review was only recently instituted in January 21, 2016. Patent
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`owner has not yet filed a Response. There has been no discovery. The parties’
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`Settlement Agreement has now been made in writing, and a true and correct copy
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`shall be filed with this Office as business confidential information pursuant to 35
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`U.S.C. § 327(b). The parties desire that the Settlement Agreement be maintained
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`as business confidential information under 37 C.F.R. §42.74(c) and a joint request
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`to that effect is being filed concurrently herewith.
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`As stated in 35 U.S.C. § 327(a), because GSN and Bally jointly request this
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`termination as to Petitioner GSN, no estoppel under 35 U.S.C. 325(e) shall attach
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`to GSN.
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`1
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`1. Appropriateness of Termination.
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`Termination is appropriate with respect to both Petitioner and Patent Owner
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`for several reasons. First, the statutory condition for termination under § 327(a) is
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`satisfied—this joint request for termination is being filed before the Office has
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`decided the merits of the proceeding.
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`Second, the parties have settled their dispute. On April 19, 2016, GSN and
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`Bally entered into a Settlement Agreement resolving all issues relating to their
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`dispute.
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`Third, given that all judicial or administrative matters that would affect or be
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`affected by a decision in this proceeding have been terminated, the merits of the
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`petition have not been determined, no motions or other matters are outstanding,
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`and concluding these proceedings at this early juncture promotes the Congressional
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`goal to establish a more efficient and streamlined patent system, the Patent
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`Owner’s and Petitioner’s joint request to terminate should be granted.
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`2.
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`Settlement Agreement.
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`The Settlement Agreement between the parties was made in writing. A true
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`and correct copy of the Settlement Agreement is being filed with this Office as
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`business confidential information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. §
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`2
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`42.74(b)-(c), along with a separate joint motion to keep the Settlement Agreement
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`confidential.
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` 3. Estoppel.
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`As stated in 35 U.S.C. § 327(a), because GSN and Bally request this
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`termination, as to Petitioner GSN (and any real parties in interest or privy to GSN),
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`no estoppel under 35 U.S.C. § 325(e) shall attach to GSN. As provided in 37
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`C.F.R. § 42.73(d)(3), because no adverse judgment has been entered, as to Patent
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`Owner Bally, no estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to Bally.
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`In view of the foregoing GSN and Bally respectfully request termination of
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`the Covered Business Method Review of U.S. Patent No. 5,816,918, Case No.
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`CBM2014-00155. Mr. Ted Cannon, back-up counsel for Petitioner, has authorized
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`the undersigned to file this motion with Petitioners’ concurrence and joinder.
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`3
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`Respectfully submitted,
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`/John M. Mueller /
`John M. Mueller, Reg. No. 44,248
`jmueller@bakerlaw.com
`BAKER & HOSTETLER LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`Tel: (513) 929-3413
`Fax: (513) 929-0303
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`/Ted M.Cannon /
`Ted M. Cannon, Reg. No. 55,036
`ted.cannon@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR,
`LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Email: BoxGSN14@knobbe.com
`Tel: 949-760-0404
`Fax: 949-760-9502
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`Dated: May 4, 2016
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`4
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 327(a) is being
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`served on May 4, 2016, via electronic email, to counsel of record for Petitioner
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`GSN Games Inc. f/k/a Worldwinner.com, Inc. at the addresses below:
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`Brenton R. Babcock (Reg. No. 39,592)
`brent.babcock@knobbe.com
`Ted M. Cannon (Reg. No. 55,036)
`ted.cannon@knobbe.com
`Michelle E. Armond (Reg. No. 53,954)
`michelle.armond@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Email: BoxGSN14@knobbe.com
`Tel: 949-760-0404
`Fax: 949-760-9502
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`/John M. Mueller/
`John M. Mueller, Reg. No. 44,248
`jmueller@bakerlaw.com
`Baker & Hostetler LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`Tel: (513) 929-3413
`Fax: (513) 929-0303
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`5
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