Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 100
`Entered: December 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`v.
`LEGO A/S,
`Patent Owner.
`
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`DECISION
`Denying Joint Motion to Terminate
`35 U.S.C. §§ 317 and 318 and 37 C.F.R. §§ 42.20, 42.72, and 42.74
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 100
`Entered: December 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`v.
`LEGO A/S,
`Patent Owner.
`
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`POWELL, Administrative Patent Judge.
`
`
`DECISION
`Denying Joint Motion to Terminate
`35 U.S.C. §§ 317 and 318 and 37 C.F.R. §§ 42.20, 42.72, and 42.74
`
`
`
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`Pursuant to our authorization, on December 12, 2017, Petitioner and
`Patent Owner filed a Joint Motion for Termination. Paper 93 (“Motion” or
`“Mot.”). With the Motion, the parties have filed a Settlement Agreement.
`Ex. 2108. The parties have requested that the Settlement Agreement be
`treated as business confidential information and be kept separate from the
`files of this inter partes review proceeding. Mot. 2.
`Pursuant to 35 U.S.C. § 317(a),
`An inter partes review instituted under this chapter 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. . . . If no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final
`written decision under section 318(a).
`In order for us to terminate these proceedings, the parties must persuade us
`that they are entitled to the relief requested. See 37 C.F.R. §§ 42.20(a),
`42.20(c).
`The parties have filed their Motion very near the conclusion of the
`proceeding. All briefing has been completed, and an oral hearing was
`conducted on October 11, 2017. Indeed, the parties first requested
`authorization to file their Motion on December 11, 2017, less than one week
`prior to the statutory due date to enter a final written decision—December
`16, 2017. Thus, the public’s interest in the status of the challenged claims of
`each patent is at its peak. See Apple, Inc. v. Smartflash LLC, Case
`CBM2015-00015, slip op. at 6 (PTAB Nov. 4, 2015) (Paper 49) (“There is a
`public interest in resolving the issues raised by these challenges because the
`record is fully developed.”). We note that, consistent with that public
`interest, the Board has in previous cases denied motions to terminate that
`were filed late in the proceedings, after the hearing was completed. See,
`
`2
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`e.g., Apple Inc. v. OpenTV, Inc., Case IPR2015-00969, slip op. at 4–5
`(PTAB Sept. 10, 2016) (Paper 29); Kinetic Technologies, Inc. v. Skyworks
`Solutions, Inc., Case IPR2014-00690, slip op. at 20–21 (PTAB Oct. 19,
`2015) (Paper 43). Here, although the panel has not yet issued a final written
`decision, the panel deliberated and decided the merits of the proceeding
`before the parties filed their Motion.
`Regarding the timing of their Motion, the parties explain that:
`With many events and issues arising from two Federal Court
`litigations and an Inter Partes Review proceeding, it was only
`with the assistance of a court-scheduled settlement conference on
`December 11, 2017 where the Parties were able to settle after an
`extended session with the United States Magistrate Judge, Robert
`A. Richardson, ending at 9 P.M. Eastern Time. The Parties
`would not have been able to reach an agreement without the
`court’s assistance, and the settlement conference could not have
`been scheduled earlier than December 11, 2017.
`Mot. 4.
`The timing of the parties’ Motion, coming as it does relative to the
`related proceeding in district court and in the final days of this proceeding,
`provides no compelling reason for terminating this inter partes review.
`Accordingly, given that we have decided the merits of the proceeding, and
`given the public’s interest in the status of the challenged claims, the Motion
`does not persuade us to grant the parties’ request for termination at this very
`late stage in the proceeding. Accordingly, the parties’ request for
`termination is denied, and a final written decision will issue. The parties’
`request that the Settlement Agreement be treated as business confidential
`information and kept separate from the file of this proceeding is granted.
`
`
`
`3
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`It is
`ORDERED that the parties’ request for termination of the instant
`proceeding is denied and the Board will proceed to a final written decision
`pursuant to 35 U.S.C. §§ 317(a) and 318(a); and
`FURTHER ORDERED that the parties’ request that the Settlement
`Agreement be treated as business confidential information and kept separate
`from the file of this proceeding is granted.
`
`
`
`4
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`
`PETITIONER:
`
`Dean Munyo
`Anthony Petro
`Ryan Beard
`Geoffrey Heaven
`MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
`dmunyon@intprop.com
`tpetro@intprop.com
`rtbpto@intprop.com
`gheaven@intprop.com
`
`PATENT OWNER:
`
`Andrew Riddles
`Elizabeth Alquist
`DAY PITNEY, LLP
`ariddles@daypitney.com
`eaalquist@daypitney.com
`
`
`5
`
`
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