throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 41
`
` Entered: March 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
` 505 GAMES, INC., ACTIVISION BLIZZARD, INC., BLIZZARD
`ENTERTAINMENT, INC., CAPCOM U.S.A. INC., THE WALT DISNEY
`CO., DISNEY INTERACTIVE STUDIOS, INC., LUCASARTS,
`ELECTRONIC ARTS INC., BANDAI NAMCO GAMES AMERICA,
`INC., BANDAI NAMCO HOLDINGS USA INC., RIOT GAMES, INC.,
`SONY COMPUTER ENTERTAINMENT AMERICA LLC, SQUARE
`ENIX, INC., SQUARE ENIX OF AMERICA HOLDINGS, INC., TAKE-
`TOW INTERACTIVE SOFTWARE, INC., ROCKSTAR GAMES, INC.,
`2KSPORTS, INC., 2K GAMES, INC., UBISOFT, INC.,
`NINTENDO OF AMERICA, INC., and NINTENDO CO., LTD.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, LLC,
`Patent Owner.
`
`
`Case IPR2014-009541
`Patent 5,561,811
`____________
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`DECISION
`Motions to Terminate
`37 C.F.R. § 42.05
`
`
`1 Case IPR2015-00568 has been joined with this proceeding.
`
`

`

`IPR2014-00954
`Patent 5,561,811
`
`
`On March 10, 2015, 505 Games (U.S.), Inc. and Babbage Holdings,
`
`LLC (“Patent Owner”) filed a joint motion to terminate the trial proceedings
`
`and to treat the submitted settlement agreement (Ex. 2002) as business
`
`confidential information 35 U.S.C. § 317. Paper 28.
`
`On March 11, 2015, Activision Blizzard Inc., Blizzard Entertainment,
`
`Inc., and Patent Owner filed a joint motion to terminate the trial proceedings
`
`and to treat the submitted settlement agreement (Ex. 2003) as business
`
`confidential information 35 U.S.C. § 317. Paper 29.
`
`Capcom U.S.A., Inc. and Patent Owner also filed a joint motion to
`
`terminate the trial proceedings and to treat the submitted settlement
`
`agreement (Ex. 2004) as business confidential information 35 U.S.C. § 317.
`
`Paper 30.
`
`The Walt Disney Co., Disney Interactive Studios, Inc., LucasArts, and
`
`Patent Owner also filed a joint motion to terminate the trial proceedings and
`
`to treat the submitted settlement agreement (Ex. 2005) as business
`
`confidential information 35 U.S.C. § 317. Paper 31.
`
`Electronic Arts, Inc. and Patent Owner also filed a joint motion to
`
`terminate the trial proceedings and to treat the submitted settlement
`
`agreement (Ex. 2006) as business confidential information 35 U.S.C. § 317.
`
`Paper 32.
`
`Bandai Namco Games America, Inc., Bandai Namco Holdings USA
`
`Inc., and Patent Owner also filed a joint motion to terminate the trial
`
`proceedings and to treat the submitted settlement agreement (Ex. 2007) as
`
`business confidential information 35 U.S.C. § 317. Paper 33.
`
`Rio Games, Inc. and Patent Owner also filed a joint motion to
`
`terminate the trial proceedings and to treat the submitted settlement
`
`
`
`2
`
`

`

`IPR2014-00954
`Patent 5,561,811
`
`agreement (Ex. 2008) as business confidential information 35 U.S.C. § 317.
`
`Paper 34.
`
`Square Enix Inc., Square Enix of America Holdings, Inc., and Patent
`
`Owner also filed a joint motion to terminate the trial proceedings and to treat
`
`the submitted settlement agreement (Ex. 2009) as business confidential
`
`information 35 U.S.C. § 317. Paper 35.
`
`Take-Two Interactive Software, Inc., Rockstar Games, Inc., 2KSports,
`
`Inc., 2K Games, Inc., and Patent Owner also filed a joint motion to terminate
`
`the trial proceedings and to treat the submitted settlement agreement (Ex.
`
`2010) as business confidential information 35 U.S.C. § 317. Paper 36.
`
`Ubisoft, Inc. and Patent Owner also filed a joint motion to terminate
`
`the trial proceedings and to treat the submitted settlement agreement (Ex.
`
`2011) as business confidential information 35 U.S.C. § 317. Paper 37.
`
`On March 12, 2015, Sony Computer Entertainment America LLC and
`
`Patent Owner filed a joint motion to terminate the trial proceedings and to
`
`treat the submitted settlement agreement (Ex. 2012) as business confidential
`
`information 35 U.S.C. § 317. Paper 38.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” In their
`
`joint motions, the parties request termination of the instant proceeding
`
`because they have settled their respective disputes and have reached
`
`
`
`3
`
`

`

`IPR2014-00954
`Patent 5,561,811
`
`agreements to terminate this inter partes review, and because the Office has
`
`not yet decided the merits of the proceeding. See, e.g., Paper 38, 2–3.2
`
`The parties also indicate that all but two district court actions in which
`
`the ’811 patent has been asserted have been settled and, in those cases, joint
`
`stipulations for dismissal either are pending or have been granted. Id. at 3–
`
`5. The parties indicate that the two district court actions that remain pending
`
`involve Konami Digital Entertainment, Inc., and against Nintendo of
`
`America, Inc., respectively. Id. at 4.
`
`The parties are reminded that the Board is not a party to the settlement
`
`and that, even if the parties agree to settle any issue in a proceeding, the
`
`Board may independently determine any question of patentability. 37 C.F.R
`
`§ 42.74(a). Because we have not yet decided the merits of the proceeding, it
`
`is appropriate to terminate this proceeding with respect to 505 Games, Inc.,
`
`Activision Blizzard, Inc., Blizzard Entertainment, Inc., Capcom U.S.A. Inc.,
`
`The Walt Disney Co., Disney Interactive Studios, Inc., LucasArts, Electronic
`
`Arts Inc., Bandai Namco Games America, Inc., Bandai Namco Holdings
`
`USA Inc., Riot Games, Inc., Sony Computer Entertainment America LLC,
`
`Square Enix, Inc., Square Enix of America Holdings, Inc., Take-Two
`
`Interactive Software, Inc., Rockstar Games, Inc., 2KSports, Inc., 2K Games,
`
`Inc., and Ubisoft, Inc. 37 C.F.R. § 42.72.
`
`Althought we terminate the involvement of the entities named above
`
`in this proceeding, the proceeding itself is not terminated because Nintendo
`
`of America, Inc. and Nintendo Co., Ltd. remain as Petitioner in this
`
`proceeding as a result of our granting the Motion for Joinder in IPR2015-
`
`
`2 Citations are to Paper 38. The other motions (Papers 28–37) contain
`substantially similar representations.
`
`
`
`4
`
`

`

`IPR2014-00954
`Patent 5,561,811
`
`00568. Paper 39; see also Nintendo of America, Inc. v. Babbage Holdings,
`
`LLC, IPR2015-00568, Paper 12.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the involvement of each of 505 Games, Inc.,
`
`Activision Blizzard, Inc., Blizzard Entertainment, Inc., Capcom U.S.A. Inc.,
`
`The Walt Disney Co., Disney Interactive Studios, Inc., LucasArts, Electronic
`
`Arts Inc., Bandai Namco Games America, Inc., Bandai Namco Holdings
`
`USA Inc., Riot Games, Inc., Sony Computer Entertainment America LLC,
`
`Square Enix, Inc., Square Enix of America Holdings, Inc., Take-Two
`
`Interactive Software, Inc., Rockstar Games, Inc., 2KSports, Inc., 2K Games,
`
`Inc., and Ubisoft, Inc. is terminated; and
`
`FURTHER ORDERED that the joint requests that the settlement
`
`agreements (Exs. 2001–2012) be treated as business confidential
`
`information, kept separate from the file of the involved patent, and made
`
`available only to Federal Government agencies on written request, or to any
`
`person on a showing of good cause, under the provisions of 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74(c), are granted.
`
`
`
`
`
`5
`
`

`

`IPR2014-00954
`Patent 5,561,811
`
`PETITIONER:
`
`Eric A. Buresh
`eric.buresh@eriseip.com
`
`Paul R. Hart
`paul.hart@eriseip.com
`
`Patrick D. McPherson
`pdmcpherson@duanmorris.com
`
`PATENT OWNER:
`
`David H. Judson
`mail@davidjudson.com
`
`Anthony M. Garza
`agarza@ccrglaw.com
`
`
`
`6
`
`

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