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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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`ZYNGA, INC.
`Petitioner
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`V.
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`PERSONALIZED MEDIA COMMUNICATIONS LLC
`Patent Owner
`___________________________
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`Case No. IPR2013-00156
`U.S. Patent No. 7,860,131
`___________________________
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`JOINT MOTION TO TERMINATE PROCEEDING AND TO FILE
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`SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
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`INFORMATION
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`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. §§ 42.72, 42.74
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`Pursuant to 35 U.S.C. §317(a) and 37 C.F.R. §§ 42.72, Patent Owner
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`Personalized Media Communications LLC (“Patent Owner” or “PMC”) and
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`Petitioner Zynga, Inc. (“Petitioner” or “Zynga”) (collectively, “the Parties”) jointly
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`request termination of the Inter Partes Review of U.S. Patent No. 7,860,131 (“the
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`’131 patent”), Case No. IPR2013-00156, due to settlement. The Parties further
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`jointly request that the settlement agreement be treated as business confidential
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`information and be kept separate from the files of the ’131 Patent pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74, as provided below.
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`I.
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`Background
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`Petitioner filed its Petition for Inter Partes Review on February 26, 2013
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`(“Petition”) and Patent Owner filed its Preliminary Patent Owner Response on
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`May 10, 2013. The Patent Trial and Appeal Board (the “Board”) issued a Decision
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`to Institute Trial on July 25, 2013. Patent Owner filed its Response to the Petition
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`and the Patent Owner’s Motion to Amend pursuant to § 42.121 on October 25,
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`2013. In response, the Petitioner filed its Reply to the Patent Owner Response and
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`its Opposition to the Motion to Amend on January 24, 2014.
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`On January 30, 2014, Patent Owner and the Petitioner reached an agreement
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`to settle all disputes between them related to all Inter Partes Review proceedings,
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`the related litigation (described below), and other patents and patent applications
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`(the “Settlement Agreement”). The Settlement Agreement includes an agreement
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`between the parties to terminate this Inter Partes Review proceeding and the three
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`other related Inter Parties Review proceedings (“IPRs”).1 The Settlement
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`Agreement has been made in writing and involves all parties to the litigation and
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`the real parties-in-interest to this proceeding.
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`The day after settlement, January 31, 2014, the Parties contacted the Board
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`to request authorization to file termination papers and to request that the Settlement
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`Agreement be maintained as business confidential information. The Board ordered
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`a teleconference that was conducted on Tuesday, February 4, 2014, with both
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`Parties in attendance. During the call, the Board authorized the filing of this
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`motion including an explanation on why termination is appropriate in this case.
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`The Board vacated all IPR due dates so that termination papers could be filed and
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`considered.
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`II. Request to Terminate and Treat Settlement Agreement as Confidential
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`Pursuant to the Board’s instructions, this joint motion to terminate is being
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`filed prior to the close of business on Friday, February 7, 2014.
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`Pursuant to 37 C.F.R. 42.74(c), a true copy of the Settlement Agreement is
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`attached hereto as an exhibit to this joint motion, and is being filed electronically
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`via the PRPS as “Parties and Board Only.” See Order for Conduct of the
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`1 The three related IPRs are IPR2013-00162 (U.S. Patent No. 7,908,638); IPR2013-
`00164 (U.S. Patent. No. 7,797,717); and IPR2013-00171 (U.S. Patent No.
`7,734,251).
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`2
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`
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`Proceedings, Feb. 4, 2014. The Parties request that the Settlement Agreement be
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`maintained as business confidential information and be kept separate from the files
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`of the ’131 Patent pursuant to 37 C.F.R. § 42.74. See also 37 U.S.C. § 317(b).
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`1. Reasons Why Termination Is Appropriate
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`Termination is proper under 35 U.S.C. § 317(a) because: (1) the Parties are
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`jointly requesting termination; (2) the Board does not have before it full briefing on
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`the issues raised during the trial; 2 and (3) the Board has not yet “decided the merits
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`of the proceeding before the request for termination is filed.” See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). As the
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`Board states in its Order for Conduct of the Proceeding, “[g]enerally, the Board
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`expects that a proceeding will terminate after the filing of a settlement agreement.”
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`See Order for Conduct of the Proceedings, Feb. 4, 2014. Indeed, termination of
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`this case will save the Parties and the Board costs and time that can be put to other
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`2 Under the Scheduling Order issued by the Board on July 25, 2013, the Parties
`would have the right to provide additional briefing for consideration by the Board
`on a number of issues before the Board would make a decision on merits. For
`example, Patent Owner has the right to file a Reply to Petitioner’s Opposition to
`the Motion to Amend by February 24, 2014. In addition, Petitioner has the right to
`file a Motion for Observations on Cross Examination of Patent Owner’s Reply
`witness by March 24, 2014. By the same date, both Parties have the right to file
`motions to exclude evidence based on prior objections. Furthermore, the Parties
`have the right to file Oppositions to the Motion(s) to Exclude and the Patent Owner
`could file its Response to Petitioner’s Observations, all by March 30, 2014. By
`April 7, 2014, the Parties would be filing Reply briefs for their respective Motions
`to Exclude.
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`3
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`use. Accordingly, the parties respectfully submit that termination of this
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`proceeding is proper under § 317(a).
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`2.
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`Status of Related Litigation
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`The ’131 Patent was asserted in a patent infringement action before the U.S.
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`District Court for the Eastern District of Texas, Personalized Media
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`Communications LLC v. Zynga, Inc., 2-12-CV-68, along with U.S. Patent No.
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`7,908,638, U.S. Patent No. 7,797,717, and U.S. Patent No. 7,734,251. Prior to
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`trial, PMC agreed to dismiss its claims of infringement of the asserted claims of the
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`’131 Patent. A trial was held from November 12, 2013 to November 19, 2013 as
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`to U.S. Patent Nos. 7,908,638, and 7,797,717 and judgment was entered in favor of
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`Zynga, Inc. based on the jury’s finding of no infringement. A directed verdict was
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`entered by the Court in favor of the PMC as to the issue of validity of those two
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`patents. The judgment is not being appealed.
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`3.
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`Identification of Parties in Related Litigation
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`There are no additional parties in the identified related litigation.
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`4.
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` Settlement Agreement should be Confidential & Held Separate
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`By its own terms, the Settlement Agreement is confidential to the Parties and
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`is not to be disclosed to third parties without consent of the other party.
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`Furthermore, the Settlement Agreement is a global settlement agreement that
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`addresses matters going well beyond the issues presented in this IPR. For at least
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`4
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`these reasons, treatment of the Settlement Agreement as business confidential
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`information to be held separate from the files for this IPR is proper.
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`IV. Conclusion
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`For the foregoing reasons, Patent Owner and Petitioner jointly request that
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`the Board terminate this Inter Partes Review proceeding and that the Settlement
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`Agreement filed with this motion be kept confidential and be kept separate from
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`the files of the ’131 Patent.
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`Dated: February 7, 2014
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`Respectfully submitted,
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`By /Thomas J. Scott, Jr./
`Thomas J. Scott, Jr.
` Registration No.: 27,836
`Stephen T. Schreiner
` Registration No.: 43,097
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorneys for Patent Owner
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`By /David B. Cochran/
`David B. Cochran
` Registration No.: 39,142
`Joseph M. Sauer
` Registration No.: 47,919
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, Ohio 44114
`(216) 586-3939
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`5
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`Attorneys for Petitioner
`Attorneys for Petitioner
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`6
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