`571-272-7822
`
`
`
` Paper 31
`
` Entered: December 11, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`Petitioners
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016
`Patent 6,441,828
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`
`DECISION
`Termination With Respect to Petitioners
`37 C.F.R. § 42.74
`
`
`
`
`1 Real-parties-in-interest Research In Motion Corporation and Research In
`Motion Limited have changed their names to “BlackBerry Corporation” and
`“BlackBerry Limited,” respectively (collectively, “BlackBerry”). Paper 22.
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`The parties filed a joint motion to terminate the instant proceeding,
`and a true copy of their written settlement agreement (Ex. 2013) made in
`connection with the termination in accordance with 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(b). Paper 30. The parties also filed a joint request to have
`their settlement agreement treated as confidential business information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Id. at 2.
`For the reasons provided below, the joint motion to terminate is
`granted-in-part. That is, the instant proceeding is terminated with respect to
`Blackberry is granted, but the instant proceeding is not terminated. The
`joint request that the settlement agreement be treated as business
`confidential information is granted.
`While the parties may agree to settle their issues related to the ’828
`patent, the Board is not a party to the settlement and may determine
`independently any question of patentability. 37 C.F.R. § 42.74(a).
`On March 18, 2013, the Board issued a decision instituting the instant
`trial as to the challenged claims of Patent 6,441,828 (“the ’828 patent”)
`based on four grounds of unpatentability under 35 U.S.C. §§ 102 and 103.
`Paper 16. In that decision, the Board determined that there is a reasonable
`likelihood that the challenged claims are unpatentable. Id. MobileMedia
`Ideas LLC (“MobileMedia”) did not file a patent owner response. Instead,
`MobileMedia filed a motion to amend the ’828 patent, cancelling claims 6,
`7, 15, 17, and 18 of the ’828 patent, and proposing five substitute claims.
`Paper 21. MobileMedia also indicated that it has conceded that claims 6, 7,
`15, 17, and 18 of the ’828 patent had been cancelled. Paper 28 at 2.
`
`2
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`Blackberry filed an opposition to MobileMedia’s motion to amend claims
`(Paper 23), and MobileMedia filed a reply to Blackberry’s opposition
`(Paper 24). An oral hearing was scheduled for October 18, 2013. Paper 27.
`However, in response to the parties’ joint request to cancel the oral hearing,
`the Board cancelled the oral hearing for the instant proceeding. Paper 28
`at 2, 4. Therefore, the trial issues had been briefed fully at the time the
`parties moved to terminate the proceeding.
`In view of the parties’ settlement agreement made in connection with
`the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b), the Board determines that it is appropriate to terminate the
`involvement of Blackberry. However, in view of the advanced stage of this
`proceeding, rather than terminate this proceeding, the Board will proceed to
`a final written decision. 35 U.S.C. §§ 317(a) and 318(a).
`MobileMedia also requests that the Board grant the motion to amend
`claims (Paper 21) filed on May 20, 2013, and indicates that Blackberry
`agrees not to oppose the entry of the motion to amend claims. Paper 30 at 2.
`The Board will enter a decision on MobileMedia’s motion to amend the ’828
`patent (Paper 21) in due course.
`It is
`ORDERED that the joint motion to terminate is granted-in-part; the
`instant proceeding is terminated with respect to Blackberry;
`FURTHER ORDERED that the instant proceeding is not terminated,
`and the Board will proceed to a final written decision pursuant to 35 U.S.C.
`§§ 317(a) and 318(a); and
`
`3
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`FURTHER ORDERED that the joint request that the settlement
`agreement be treated as business confidential information and be kept
`separate from the patent files is granted.
`
`
`
`PETITIONER:
`
`Robert C. Mattson
`Oblon Spivak
`cpdocketmattson@oblon.com
`
`
`
`PATENT OWNER:
`
`Anthony C. Coles
`PROSKAUER ROSE LLP
`acoles@proskauer.com
`
`4
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