`571-272-7822
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`Date: February 4, 2014
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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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`ZYNGA INC.
`Petitioners,
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner.
`____________
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`Cases IPR2013-00156 (Patent 7,860,131)
`IPR2013-00162 (Patent 7,908,638)
`IPR2013-00164 (Patent 7,797,717)
`IPR2013-00171 (Patent 7,734,251)1
`____________
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`1 This order addresses a similar issue in the four cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
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`On February 4, 2014, a conference call was held between counsel for the
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`respective parties and Judges Medley, Easthom and Chang.
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`The purpose of the conference call was to discuss a settlement agreement
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`entered into by the parties. Counsel explained that the parties have a written
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`settlement agreement which contemplates the termination of the inter partes
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`review proceedings.
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`An inter partes review has been instituted in each of the four cases. The
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`Board does not have before it full briefing on the issues raised during each of the
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`four trials. Moreover, the Board has not entered a final written decision.
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`Generally, the Board expects that a proceeding will terminate after the filing of a
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`settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012). The rule governing settlement indicates that any
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`agreement between the parties made in connection with, or in contemplation of, the
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`termination of a proceeding shall be in writing and filed with the Board. 37 C.F.R.
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`§ 42.74.
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`Based on the facts of these proceedings, the parties are authorized to, and
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`shall file, in addition to the settlement agreement, a joint motion to terminate the
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`proceeding briefly explaining why termination is appropriate in these cases. As
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`explained, the parties also must file, as an exhibit, a true copy of their settlement
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`agreement to terminate the proceedings. Any request that the agreement be treated
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`as business confidential information and be kept separate from the files of the
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`involved patent must be filed with the settlement agreement. 37 C.F.R. § 42.74(c).
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`As explained, the parties may make such request in the motion to terminate.
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`The parties are directed to FAQ G3 on the Board’s website page at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
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`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
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`2
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`Should a question arise regarding the confidential filing of the settlement
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`agreement, the parties may contact the Board at 571-272-7822 for assistance.
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`Counsel agreed to file the joint motion to terminate each proceeding and the
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`settlement agreement by close of business Friday, February 7, 2014.
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a separate joint motion to
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`terminate in each of the four proceedings;
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`FURTHER ORDERED that the joint motions are due February 7, 2014; and
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`FURTHER ORDERED that the joint motions shall be accompanied by a
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`true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that the parties may request that the settlement
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`agreement be treated as business confidential information as specified by 37 C.F.R.
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`§ 42.74(c);
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`FURTHER ORDERED that any confidential settlement agreement must be
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`filed electronically in each of the four proceedings via the Patent Review
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`Processing System (PRPS) in accordance with the instructions provided on the
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`Board’s website (e.g., uploading as “Parties and Board Only”); and
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`FURTHER ORDERED that the remaining DUE DATES in each of the four
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`proceedings are vacated.
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`3
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`For PETITIONER:
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`David Cochran
`dcochran@jonesday.com
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`Joseph Sauer
`jmsauer@jonesday.com
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`Louis Touton
`lltouton@jonesday.com
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`David Wu
`dwwu@jonesday.com
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`For PATENT OWNER:
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`Thomas Scott, Jr.
`tscott@goodwinprocter.com
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`Stephen Schreiner
`sschreiner@goodwinprocter.com
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`4
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