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