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`
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`
`
`
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` Paper 10
`
`
` Entered: July 22, 2013
`
`Trial@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Oracle Corporation
`Petitioner
`
`v.
`
`Clouding IP, LLC
`Patent Owner
`
`
`Case IPR2013-00261 (JL)
`Patent 6,738,799
`
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, MICHAEL W. KIM, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`On July 19, 2013, the parties filed a joint motion to terminate this
`proceeding with respect to the petitioner (“Oracle”). (Paper 7.) With the joint
`motion, the parties filed a copy of their written settlement agreement covering
`Patent 6,738,799 involved in this proceeding. (Paper 9.) The parties also filed, on
`
`
`
`Case IPR2013-00261
`Patent 6,738,799
`
`July 19, 2013, 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). (Paper 8.)
`In a telephone conference call conducted on July 11, 2013, counsel for the
`parties represented that they have reached an agreement resolving the dispute in
`the instant proceeding and will also move to dismiss related district court litigation
`between the parties and involving Patent 6,738,799. The Board asked the parties
`to indicate in their joint motion to terminate this proceeding whether there will be
`codefendants remaining in such related litigation. The joint motion indicates none.
`The joint motion identifies other related litigation involving Patent
`6,738,799 but not Oracle. The defendants in such other related litigation have not
`filed a petition for inter partes review of Patent 6,738,799.
`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). Oracle’s petition was filed on May 2, 2013,
`and Clouding has not yet filed its Preliminary Response. The Board has not yet
`determined whether an inter partes review should be instituted.
`Oracle represents that it will no longer participate, even if the Board
`institutes an inter partes review and commences a trial. That means even if an
`inter partes review is instituted, Oracle will not file a reply to any Patent Owner
`Response or an opposition to any Motion to Amend Claims. Oracle also will not
`be conducting any cross examination of Clouding’s witnesses. Also, because of
`non-participation of Oracle, Clouding may not have an opportunity to cross
`examine Oracle’s witnesses whose testimony are relied on by Oracle’s petition.
`
`
`
`-2-
`
`
`
`Case IPR2013-00261
`Patent 6,738,799
`
`
`As no trial has been instituted based on Oracle’s petition, this proceeding is
`in the preliminary proceeding stage.1 Based on the facts of this case, it is
`appropriate to enter judgment.2
`Accordingly, it is
`ORDERED that the joint motion to terminate IPR2013-00261 is
`
`GRANTED, and this proceeding is hereby terminated as to all parties including
`petitioner Oracle and patent owner Clouding; and
`FURTHER ORDERED that the parties’s joint request to have their
`
`settlement agreement treated as business confidential information under the
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.
`
`
`
`
`
`
`1 A preliminary proceeding begins with the filing of a petition for instituting a trial
`and ends with a written decision as to whether a trial will be instituted. 37 C.F.R.
`§ 42.2.
`2 A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
`
`
`
`-3-
`
`
`
`Case IPR2013-00261
`Patent 6,738,799
`
`For PETITIONER
`Greg Gardella
`Scott A. McKeown
`OBLON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`For PATENT OWNER
`
`Tarek N. Fahmi
`Amy J. Embert
`Fahmi, Sellers & Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
`
`
`
`
`-4-
`
`
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