throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Entered: February 12, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`RPX CLEARINGHOUSE, LLC,
`Patent Owner.1
`____________
`
`
`Case IPR2015-00079
`Patent 5,838,5512
`____________
`
`
`Before JONI Y. CHANG, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Proceeding
`
`
`
`1 Original Patent Owners, Rockstar Consortium US LP and MobileStar
`Technologies, LLC (collectively, “Rockstar”), assigned their rights to the
`patents-at-issue to RPX Clearinghouse, LLC. Paper 10, 2. The patents-at-
`issue are listed in the Appendix of the instant Decision.
`2 This Decision addresses the same issues in the cases identified in the
`Appendix. Therefore, we exercise our discretion to issue one Decision to be
`entered in each of the identified cases.
`
`
`

`

`IPR2015-00079
`Patent 5,838,551
`
`
`37 C.F.R. § 42.73
`
`On February 10, 2015, Petitioner, Google Inc. (“Google”), and Patent
`
`Owner, RPX Clearinghouse, LLC (“RPX”), filed a Corrected Joint Motion
`
`to Terminate in each proceeding listed in the Appendix. Paper 10.3 The
`
`parties also filed a true copy of their Written Settlement Agreement
`
`(Ex. 2001), made in connection with the termination of these proceedings, in
`
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and a Patent
`
`Assignment (Ex. 2002). Additionally, the parties submitted a Corrected
`
`Joint Request to have their Written Settlement Agreement and Patent
`
`Assignment treated as business confidential under 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c). Paper 11.
`
`Pursuant to the Board’s authorization, the parties timely filed a Joint
`
`Motion to Terminate and Request in each of the 17 proceedings at issue, on
`
`February 9, 2015. Papers 8, 9. The Motions and Requests, however,
`
`identified Rockstar as the patent owner, instead of RPX. Id. Subsequently,
`
`the Board notified the parties of the improper filings and authorized them to
`
`file the Corrected Motions and Requests. For the reasons set forth below,
`
`the Corrected Joint Motions to Terminate and Corrected Requests are
`
`granted.
`
`Generally, the Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`
`
`3 For clarity and expediency, we treat IPR2015-00079 as representative, and
`all citations are to IPR2015-00079 unless otherwise noted.
`
`2
`
`

`

`IPR2015-00079
`Patent 5,838,551
`
`
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Google filed 17
`
`Petitions for inter partes reviews of the patents listed in the Appendix. RPX
`
`has not filed a Patent Owner Preliminary Response. The Board also has not
`
`determined, under 35 U.S.C. § 314, whether or not to institute an inter
`
`partes review in these proceedings. As no trial has been instituted based on
`
`Google’s Petitions, the proceedings at issue are in the preliminary
`
`proceeding4 stage. In their Corrected Joint Motions to Terminate, the parties
`
`indicate that they have reached a settlement as to all the disputes involving
`
`the patents-at-issue. Paper 10, 3; Ex. 2001. Upon consideration of the facts
`
`before us, we determine that it is appropriate to terminate each of the 17
`
`proceedings as to both parties, and enter judgment.
`
`For the foregoing reasons, it is hereby:
`
`ORDERED that the Corrected Joint Motions to Terminate for the
`
`inter partes reviews identified in the Appendix are granted;
`
`FURTHER ORDERED that each of these proceedings is terminated
`
`as to all parties—namely, Google and RPX; and
`
`FURTHER ORDERED that the Corrected Joint Request, in each of
`
`these proceedings, to have the parties’ Written Settlement Agreement
`
`(Ex. 2001) and Patent Assignment (Ex. 2002) treated as business
`
`confidential information kept separate from the patent file, and made
`
`available only to Federal Government agencies on written request, or to any
`
`
`
`4 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.
`
`3
`
`

`

`IPR2015-00079
`Patent 5,838,551
`
`
`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c), are granted.
`
`
`
`4
`
`

`

`IPR2015-00079
`Patent 5,838,551
`
`
`
`
`APPENDIX
`
`Case No.
`
`U.S. Patent No.
`
`IPR2015-00079
`
`IPR2015-00090
`
`IPR2015-00091
`
`IPR2015-00197
`
`IPR2015-00200
`
`IPR2015-00201
`
`IPR2015-00202
`
`IPR2015-00204
`
`IPR2015-00205
`
`IPR2015-00206
`
`IPR2015-00207
`
`IPR2015-00210
`
`IPR2015-00211
`
`IPR2015-00212
`
`IPR2015-00215
`
`IPR2015-00235
`
`IPR2015-00236
`
`5,838,551
`
`6,937,572 B1
`
`6,937,572 B1
`
`6,128,298
`
`6,333,973 B1
`
`6,333,973 B1
`
`6,128,298
`
`6,037,937
`
`6,037,937
`
`6,128,298
`
`6,333,973 B1
`
`6,128,298
`
`6,128,298
`
`6,128,298
`
`6,765,591 B2
`
`6,463,131 B1
`
`6,463,131 B1
`
`
`
`
`
`5
`
`

`

`IPR2015-00079
`Patent 5,838,551
`
`
`For PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX, L.L.P.
`weatherwax@glwllp.com
`hendifar@glwllp.com
`
`
`For PETITIONER:
`
`David C. Kiernan
`Aaron P. Maurer
`WILLIAMS & CONNOLLY, L.L.P.
`dkiernan@wc.com
`amaurer@wc.com
`
`Scott A. McKeown
`Greg Gardella
`OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`cpdocketgardella@oblon.com
`
`
`6
`
`

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