`571-272-7822
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`Paper 21
`Entered: July 22, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Oracle Corporation
`Petitioner
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`v.
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`Clouding IP, LLC
`Patent Owner
`
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`Case IPR2013-00073 (JL)
`Patent 6,738,799
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`Before JAMESON LEE, JONI Y. CHANG, MICHAEL W. KIM, and
`RAMA G. ELLURU, Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
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`On July 19, 2013, the parties filed a joint motion to terminate this inter
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`partes review with respect to the petitioner (“Oracle”). (Paper 18.) With the joint
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`motion, the parties filed a copy of their written settlement agreement covering
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`Patent 6,738,799 involved in this inter partes review. (Paper 20.) The parties also
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`filed, on July 19, 2013, a joint request to have their settlement agreement treated as
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`Case IPR2013-00073
`Patent 6,738,799
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`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c). (Paper 19.)
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” The requirement for
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`terminating review with respect to Oracle is met.
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`Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
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`review, the Office may terminate the review or proceed to a final written decision
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`under section 318(a).” Oracle is the sole petitioner in this review. The Board has
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`discretion to terminate this review with respect to the patent owner (“Clouding”).
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`Oracle represents that it will no longer participate even if the Board does not
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`terminate this review. That means it will file no reply to Clouding’s Patent Owner
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`Response or an opposition to Clouding’s Motion to Amend Claims. It also will not
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`be conducting any cross examination of Clouding’s witnesses.
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`In a telephone conference call conducted on July 11, 2013, counsel for the
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`parties represented that they will move to dismiss related district court litigation
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`between the parties and involving Patent 6,738,799. The Board asked the parties
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`to indicate in their joint motion to terminate proceeding whether there will be
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`codefendants remaining in such related litigation. The joint motion indicates none.
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`The joint motion identifies other related litigation involving Patent
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`6,738,799 but not Oracle. The defendants in such other related litigation have not
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`filed a petition for inter partes review of Patent 6,738,799. There is no pending
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`motion by any third party for joinder with this inter partes review.
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`-2-
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`Case IPR2013-00073
`Patent 6,738,799
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`The Board determines that in the circumstances of this case it is appropriate
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`to terminate review both as to petitioner Oracle and patent owner Clouding without
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`rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
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`It is
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`ORDERED that the joint motion to terminate IPR2013-00073 is
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`GRANTED, and this inter partes review is hereby terminated as to all parties
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`including petitioner Oracle and patent owner Clouding; and
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`FURTHER ORDERED that the parties’s joint request to have their
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`settlement agreement treated as business confidential information under the
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.
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`-3-
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`Case IPR2013-00073
`Patent 6,738,799
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`For PETITIONER
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`Greg Gardella
`Scott A. McKeown
`OBLON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
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`For PATENT OWNER
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`Tarek N. Fahmi
`Amy J. Embert
`Fahmi, Sellers & Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
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`-4-
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