`Trials@uspto.gov
`Entered: April 20, 2015
`571-272-7822
`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-
`TWO 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
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`1 Case IPR2015-00568 has been joined with this proceeding.
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`
`On March 24, 2015, the Board terminated the participation 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. in this proceeding. Paper
`41.
`
`On April 13, 2015, the Board authorized the sole remaining entities—
`Nintendo of America, Inc., and Nintendo Co., Ltd. (collectively,
`“Petitioner”) and Babbage Holdings, LLC (“Patent Owner”)—to file a joint
`motion to terminate. On April 14, 2015, Petitioner and Patent Owner filed a
`joint motion to terminate the trial proceedings and to treat the submitted
`settlement agreement (Ex. 2013) as business confidential information 35
`U.S.C. § 317. Paper 43.
`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 motion, the parties request termination of the instant proceeding
`because they have settled their respective disputes and have reached an
`agreement to terminate this inter partes review, and because the Office has
`not yet decided the merits of the proceeding. See, e.g., Paper 43, 2–3.
`The parties also indicate that all but one district court actions in which
`the ’811 patent has been asserted have been settled and, in those cases, joint
`
`
`
`2
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`stipulations for dismissal have been granted. Id. at 3–5. The parties indicate
`that the sole district court action that remains pending involves Konami
`Digital Entertainment, Inc. Id. at 4. We note that Konami Digital
`Entertainment, Inc. is not party to this proceeding.
`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). Generally, however, 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. 48,756, 48,768 (Aug. 14, 2012). We
`have not yet decided the merits of this proceeding. For example, the oral
`argument has not been held. The Board is persuaded that, under these
`circumstances, it is appropriate to terminate this proceeding as to both
`Petitioner and Patent Owner without rendering a final written decision.
`37 C.F.R. § 42.72.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the the joint motion to terminate this proceeding is
`GRANTED and this proceeding is hereby terminated as to both Petitioner
`and Patent Owner; and
`FURTHER ORDERED that the joint request that the settlement
`agreement (Ex. 2013) 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
`
`
`
`3
`
`
`
`IPR2014-00954
`Patent 5,561,811
`
`showing of good cause, under the provisions of 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c), is GRANTED.
`
`
`PETITIONER:
`
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`Patrick D. McPherson
`Phillip D. Mancini
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`PDMancini@duanemorris.com
`
`PATENT OWNER:
`
`David H. Judson
`LAW OFFICE OF DAVID H. JUDSON
`mail@davidjudson.com
`
`Anthony M. Garza
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`agarza@ccrglaw.com
`
`
`
`
`4
`
`
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