Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper: 41
`
`Entered: January 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00343 (Patent 8,640,179 B1)
`Case IPR2015-00345 (Patent 8,205,237 B2)
`Case IPR2015-00347 (Patent 8,010,988 B2)
`Case IPR2015-00348 (Patent 8,656,441 B1)1
`____________
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Termination of Proceedings after Remand
`35 U.S.C. § 317
`
`
`
`
`
`
`
`1 We use this caption to indicate that this Order applies to, and is entered in,
`all four proceedings.
`
`
`571-272-7822
`
`
`
`
`Paper: 41
`
`Entered: January 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00343 (Patent 8,640,179 B1)
`Case IPR2015-00345 (Patent 8,205,237 B2)
`Case IPR2015-00347 (Patent 8,010,988 B2)
`Case IPR2015-00348 (Patent 8,656,441 B1)1
`____________
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Termination of Proceedings after Remand
`35 U.S.C. § 317
`
`
`
`
`
`
`
`1 We use this caption to indicate that this Order applies to, and is entered in,
`all four proceedings.
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`We entered Final Written Decisions in these cases on June 20, 2016.
`
`IPR2015-00343, Paper 30; IPR2015-00345, Paper 30; IPR2015-00347,
`
`Paper 30; IPR2015-00348, Paper 30. In our decisions, we concluded, inter
`
`alia, that Petitioner, Google, Inc., had not shown by a preponderance of the
`
`evidence that the following claims are unpatentable:
`
`Case
`
`Patent
`
`Claims
`
`IPR2015-00343
`
`IPR2015-00345
`
`IPR2015-00347
`
`IPR2015-00348
`
`8,640,179 B1
`(“the ’179 patent”)
`8,205,237 B2
`(“the ’237 patent”)
`8,010,988 B2
`(“the ’988 patent”)
`8,656,441 B1
`(“the ’441 patent”)
`
`1–3, 6, 8–14, 18, 19, 21–27,
`29–31, and 34–37
`25–27, 29, and 30
`
`15, 16, 21–28, 31–33, 38, 51,
`and 52
`1–3, 6, 8–14, 18, 19, 21–27,
`29, and 30
`
`Petitioner appealed our decisions regarding these claims to the United States
`
`Court of Appeals for the Federal Circuit.2 The Federal Circuit vacated our
`
`final decisions with respect to all claims at issue on appeal and remanded to
`
`the Board for consideration of patentability based on a modified construction
`
`
`2 In IPR2015-00345, we also concluded Petitioner had not shown that claims
`1–8, 21, 22, 33–35, 37, and 38 of the ’237 patent are unpatentable.
`Petitioner did not appeal our decision with respect to those claims. We
`further concluded in IPR2015-00345 that Petitioner had shown that claims
`9–16, 23, and 24 of the ’237 patent are unpatentable. Patent Owner,
`Network-1 Technologies, Inc., did not appeal that part of our decision.
`Finally, in IPR2015-00347, we also concluded Petitioner had not shown that
`claim 17 of the ’988 patent is unpatentable. Petitioner did not appeal that
`determination.
`
`2
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`of the claim term “non-exhaustive search.” Google LLC v. Network-1
`
`Techs., Inc., 726 Fed. App’x 779 (Fed. Cir. 2018).
`
`On December 21, 2018, Petitioner and Patent Owner filed a Joint
`
`Motion to Terminate Proceedings under 35 U.S.C. § 317(a) in each of these
`
`four proceedings, requesting termination of the proceedings with respect to
`
`the claims remaining after remand. IPR2015-00343, Paper 38 (“Mot.”);
`
`IPR2015-00345, Paper 37; IPR2015-00347, Paper 37; IPR2015-00348,
`
`Paper 37.3 The parties also filed a true copy of a Joint Stipulation entered
`
`into by and between the parties. Ex. 1023.4
`
`In the Joint Motion, the parties represent that
`
`[o]ther than as indicated in the Joint Stipulation, there are no
`written or oral agreements or understandings, including any
`collateral agreements, between the parties, including but not
`limited to licenses, covenants not to sue, confidentiality
`agreements, or other agreements of any kind, that are made in
`connection with, or in contemplation of, the termination of this
`proceeding.
`
`Mot. 1–2. Under the terms of the Joint Stipulation, Patent Owner covenants
`
`not to sue Petitioner for infringement of the claims of the ’179 patent, the
`
`’237 patent, the ’988 patent, and the ’441 patent remaining in these
`
`proceedings after remand (i.e., the claims identified in the table above).
`
`Ex. 1023, 3–4.
`
`
`3 The parties filed similar motions in each of the four proceedings. For
`convenience, we cite to the motion filed in IPR2015-00343, unless otherwise
`noted.
`4 The Joint Stipulation was filed as Exhibit 1023 in each proceeding.
`
`3
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`Under 35 U.S.C. § 317(a), an inter partes review “shall be terminated
`
`with respect to any petitioner upon the joint request of the petitioner and the
`
`patent owner, unless the Office has decided the merits of the proceeding
`
`before the request for termination is filed.” We have not issued decisions on
`
`remand and thus have not decided the merits of the remanded proceedings.
`
`Under 35 U.S.C. § 317(b), the parties must file any agreement between the
`
`parties, including any collateral agreements referred to in such agreement,
`
`made in connection with or in contemplation of the termination of an inter
`
`partes review. The Joint Stipulation entered into by the parties and filed in
`
`these proceedings satisfies this requirement. Accordingly, we determine it is
`
`appropriate to terminate these proceedings without rendering decisions on
`
`remand.
`
`
`
`It is:
`
`ORDERED that the Joint Motions to Terminate Proceedings under
`
`35 U.S.C. § 317 are granted; and
`
`FURTHER ORDERED that IPR2015-00343, IPR2015-00345,
`
`IPR2015-00347, and IPR2015-00348 are terminated.
`
`
`
`4
`
`
`
`IPR2015-00343 (Patent 8,640,179 B1)
`IPR2015-00345 (Patent 8,205,237 B2)
`IPR2015-00347 (Patent 8,010,988 B2)
`IPR2015-00348 (Patent 8,656,441 B1)
`
`FOR PETITIONER:
`
`David M. Krinsky
`Christopher A. Suarez
`Williams & Connolly LLP
`dkrinsky@wc.com
`csuarez@wc.com
`
`
`
`FOR PATENT OWNER:
`
`Charles R. Macedo
`Brian A. Comack
`Amster, Rothstein & Ebenstein LLP
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`Gregory Dovel
`Dovel & Lunder, LLP
`greg@dovellaw.com
`
`
`5
`
`
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