Trials@uspto.gov Paper No. 24
`
`571-272-7822
` Date Entered: November 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.; SYBASE, INC.; DELL, INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; and TERADATA
`OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00783
`Patent 6,597,812 B1
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`TERMINATION ORDER
`35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72, and 42.10(c)
`
`
`
`571-272-7822
` Date Entered: November 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.; SYBASE, INC.; DELL, INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; and TERADATA
`OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00783
`Patent 6,597,812 B1
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`TERMINATION ORDER
`35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72, and 42.10(c)
`
`
`
`IPR2016-00783
`Patent 6,597,812 B1
`
`
`SAP America, Inc. and Sybase, Inc. (“SAP and Sybase”), with other parties,
`
`filed a Petition for an inter partes review of U.S. Patent No. 6,597,812 (the ’812
`
`patent) on April 1, 2016, and Patent Owner Realtime Data, LLC (“Realtime”) filed
`
`a Preliminary Response on July 7, 2016. Paper 1; Paper 12. On October 5, 2016,
`
`the Board determined, under 35 U.S.C. § 314, to institute a review in the instant
`
`proceeding. Paper 19.
`
`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.” Moreover, the Board
`
`generally expects that a proceeding will terminate as to settling parties 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).
`
`On October 25, 2016, Realtime, SAP, and Sybase filed a Joint Motion to
`
`Terminate Proceedings under 35 U.S.C. § 317(a) (Paper 21), a true copy of the
`
`written settlement agreement (Ex. 1021), and a joint request to file the settlement
`
`agreement as business confidential information and to keep separate the agreement
`
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (Paper 22). Realtime has not
`
`filed a Patent Owner Response and SAP and Sybase has not filed a Reply. More
`
`importantly, no final written decision has been entered in this proceeding. The
`
`Board is satisfied that, under these circumstances, it is appropriate to terminate this
`
`proceeding as it relates only to SAP and Sybase. 35 U.S.C. § 317(a); 37 C.F.R.
`
`§ 42.72.
`
`In addition, SAP and Sybase, with other parties, filed a motion on October
`
`20, 2016, requesting pro hac vice admission of J. Christopher Carraway in this
`
`proceeding. Paper 23, 1–2. The Motion indicates that Mr. Carraway has extensive
`
`
`
`2
`
`
`
`IPR2016-00783
`Patent 6,597,812 B1
`
`patent litigation experience (see Ex. 1022 ¶¶ 2–3) and has established familiarity
`
`with the particular subject matter at issue in this proceeding (see Ex. 1022 ¶ 10)
`
`under 37 C.F.R. § 42.10(c). Paper 23, 1–2. Petitioner represents that Realtime
`
`does not oppose this Motion for pro hac vice. Id. at 1. After due consideration,
`
`Petitioner’s Motion for pro hac vice is granted.
`
`Accordingly, it is:
`
`ORDERED that the joint motion to terminate this proceeding only as it
`
`relates to SAP and Sybase is GRANTED under the provisions of 35 U.S.C.
`
`§ 317(a);
`
`FURTHER ORDERED that any subsequent papers filed in this inter partes
`
`review should not include SAP and Sybase in the caption;
`
`FURTHER ORDERED that the parties’ joint request that the written
`
`settlement agreement (Ex. 1021) be: (i) treated as business confidential
`
`information; (ii) kept separate from the file of the ’812 patent; (iii) kept
`
`confidential from any third party; and (iv) 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), is
`
`GRANTED;
`
`FURTHER ORDERED that Petitioner’s Motion for pro hac vice is
`
`GRANTED;
`
`FURTHER ORDERED that J. Christopher Carraway is admitted as back-up
`
`counsel of record for Petitioner for the instant proceeding;
`
`FURTHER ORDERED that Petitioner shall file updated mandatory
`
`disclosures under 37 C.F.R. § 42.8(b) providing updated counsel and service
`
`information;
`
`
`
`3
`
`
`
`IPR2016-00783
`Patent 6,597,812 B1
`
`
`FURTHER ORDERED that Petitioner is to continue to have a registered
`
`practitioner represent it as lead counsel for the instant proceeding;
`
`FURTHER ORDERED that J. Christopher Carraway is to comply with the
`
`Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
`
`set forth in Part 42 of Title 37, Code of Federal Regulations; and
`
`FURTHER ORDERED that J. Christopher Carraway is to be subject to the
`
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq.
`
`4
`
`
`PETITIONER:
`
`John Vandenberg
`john.vandenberg@klarquist.com
`
`Garth Winn
`garth.winn@klarquist.com
`
`J. Christopher Carraway
`chris.carraway@klarquist.com
`
`
`
`PATENT OWNER:
`
`Jason Eisenberg
`Jasone-ptab@skgf.com
`
`Donald Featherstone
`donf-PTAB@skgf.com
`
`Joseph Mutschelknaus
`jmutsche-PTAB@skgf.com
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