Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 24
`Date Entered: October 27, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; SAP AMERICA, INC.;
`SYBASE, INC.; HEWLETT-PACKARD ENTERPRISE CO.; HP ENTERPRISE
`SERVICES, LLC; TERADATA OPERATIONS, INC.; ECHOSTAR
`CORPORATION; AND HUGHES NETWORK SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01002
`Patent 9,116,908 B2
`____________
`
`
`
`
`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) and 37 C.F.R. §§ 42.72 and 42.10(e)
`
`
`571-272-7822
`
`
`Paper No. 24
`Date Entered: October 27, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; SAP AMERICA, INC.;
`SYBASE, INC.; HEWLETT-PACKARD ENTERPRISE CO.; HP ENTERPRISE
`SERVICES, LLC; TERADATA OPERATIONS, INC.; ECHOSTAR
`CORPORATION; AND HUGHES NETWORK SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01002
`Patent 9,116,908 B2
`____________
`
`
`
`
`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) and 37 C.F.R. §§ 42.72 and 42.10(e)
`
`
`
`IPR2016-01002
`Patent 9,116,908 B2
`
`
`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. 9,166,908 (the ’908
`patent) on May 5, 2016 and Realtime filed a Preliminary Response on August 16,
`2016. Paper 5; Paper 19. On October 19, 2016, Patent Owner Realtime Data, LLC
`(“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. 2009), 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). The Board has not yet
`issued a decision, under 35 U.S.C. § 314, whether to institute a review in the
`instant case. As no trial has been instituted based on SAP and Sybase’s Petition,
`this matter is in the preliminary proceeding1 stage.
`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.” Generally, the Board
`expects that a proceeding in the preliminary stage 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).
`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.
`
`
`1 A preliminary proceeding begins with the filing of a petition for instituting a trial
`and ends with a written decision as to whether trial will be instituted. 37 C.F.R.
`§ 42.2.
`
`
`
`2
`
`
`
`IPR2016-01002
`Patent 9,116,908 B2
`
`
`In addition, SAP and Sybase, with other parties, filed a motion on October
`20, 2016, requesting that two of its backup counsel, John Vandenberg and Garth
`Winn representing SAP and Sybase, be permitted to withdraw as counsel of record
`for Petitioner in this proceeding. Paper 23, 1–2. The Motion indicates that the
`currently named lead counsel and several other backup counsel will remain in this
`proceeding. Id. Petitioner represents that Realtime does not oppose this Motion to
`Withdraw Counsel. Id. After due consideration, Petitioner’s Motion to Withdraw
`Counsel 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. 2009) be: (i) treated as business confidential
`information; (ii) kept separate from the file of the ’908 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 to Withdraw Counsel is
`GRANTED;
`FURTHER ORDERED that John Vandenberg and Garth Winn are
`withdrawn as counsel of record for Petitioner; and
`
`
`
`3
`
`
`
`IPR2016-01002
`Patent 9,116,908 B2
`
`
`FURTHER ORDERED that Petitioner shall file updated mandatory
`disclosures under 37 C.F.R. § 42.8(b) providing updated counsel and service
`information.
`
`PETITIONERS:
`Andrew R. Sommer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`asommer@winston.com
`tdunham@winston.com
`
`David M. O’Dell
`Kyle Howard
`Greg Webb
`HAYNES AND BOONE, LLP
`David.odell.ipr@haynesboone.com
`kyle.howard.ipr@haynesboone.com
`greg.webb.ipr@haynesboone.com
`
`Jamie R. Lynn
`BAKER BOTTS, L.L.P.
`jamie.lynn@bakerbotts.com
`
`John D. Vandenberg
`Garth A. Winn
`KLARQUIST SPARKMAN, LLP
`john.vandenberg@klarquist.com
`garth.winn@klarquist.com
`
`Adam R. Shartzer
`FISH & RICHARDSON PC
`shartzer@fr.com
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01002
`Patent 9,116,908 B2
`
`PATENT OWNER:
`
`Jason Eisenberg
`Donald Featherstone
`Joseph Mutschelknaus
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`jasone-ptab@skgf.com
`donf-ptab@skgf.com
`jmutsche-ptab@skgf.com
`
`
`
`
`
`
`
`5
`
`
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