`Tel: 571-272-7822
`
`Paper 14
`Entered: July 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PAYPAL, INC.,
`Petitioner,
`
`v.
`
`MONEYCAT LTD,
`Patent Owner.
`
`
`Cases
`CBM2017-00030 (Patent 8,195,578)
`IPR2017-00541 (Patent 8,712,918)
` IPR2017-00542 (Patent 8,712,918)1
`
`
`Before WILLIAM V. SAINDON, BRYAN F. MOORE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`ORDER
`Terminating Proceedings Due to Settlement
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 This order addresses joint motions to terminate in all three cases. We
`exercise our discretion to issue a single order to be entered in each case.
`
`
`
`CBM2017-00030 (Patent 8,195,578)
`IPR2017-00541 (Patent 8,712,918)
`IPR2017-00542 (Patent 8,712,918)
`
`
`Introduction
`1.
`The Board has instituted review in IPR2017-00541 and -00542, but
`the trials are at an early stage; Patent Owner has not yet filed its Response to
`the Petition in these proceedings. The Board has yet to decide whether to
`institute review in CBM2017-00030.
`On June 30, 2017, pursuant to Board authorization, Patent Owner and
`Petitioner filed joint motions to terminate the proceedings. Paper 9.2 Along
`with the motion, the parties filed a copy of a document they describe as their
`written settlement agreement, as well as a separate joint request to treat the
`settlement agreement as business confidential information. Paper 10;
`Exhibit 1028. See 37 C.F.R. § 42.74(c) (a party to a settlement may request
`that the settlement agreement be treated as business confidential and be kept
`separate from the patent file).
`Discussion
`2.
`The Parties state in the Joint Motion to Terminate that “the parties
`
`have resolved their dispute” and “request termination of this proceeding.”
`Paper 9, 2. Under these circumstances, we determine that it is appropriate to
`terminate each of these proceedings. See 35 U.S.C. § 317(a) and 37 C.F.R.
`§ 42.74.
`After reviewing the parties’ settlement agreement, we find that the
`settlement agreement contains business confidential information regarding
`the terms of the settlement and good cause exists to treat the settlement
`
`
`2 Citations in this Order are to papers and exhibits in CBM2017-00030. The
`other two proceedings include similar papers and exhibits.
`
`2
`
`
`
`CBM2017-00030 (Patent 8,195,578)
`IPR2017-00541 (Patent 8,712,918)
`IPR2017-00542 (Patent 8,712,918)
`
`agreement as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`3.
`
`Order
`
`
`
`It is
`ORDERED that the Joint Motion to Terminate the Proceeding in
`CBM2017-00030, IPR2017-00541, and IPR2017-00542 is granted and that
`these proceedings are hereby terminated; and
`
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreements as business confidential information is granted in
`each proceeding, and the settlement agreements (Exhibit 1028 in CBM2017-
`00030; Exhibit 1026 in IPR2017-00541; Exhibit 1028 in IPR2017-00542)
`shall be treated as business confidential information under 37 C.F.R.
`§ 42.74(c), kept separate from the files of their respective patents, and
`remain designated as “Board and Parties Only.”
`
`
`
`
`
`
`3
`
`
`
`CBM2017-00030 (Patent 8,195,578)
`IPR2017-00541 (Patent 8,712,918)
`IPR2017-00542 (Patent 8,712,918)
`
`PETITIONERS:
`Adrian Percer
`Brian Chang
`WEIL GOTSHAL & MANGES LLP
`adrian.percer@weil.com
`brian.chang@weil.com
`
`Naveen Modi
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`
`
`PATENT OWNER:
`Kevin D. McCarthy
`ROACH BROWN MCCARTHY & GRUBER, P.C.
`kdmccarthy@roachbrown.com
`
`4
`
`