UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONERS’ AND PATENT OWNER’S JOINT MOTION TO
`TERMINATE INTER PARTES REVIEW PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONERS’ AND PATENT OWNER’S JOINT MOTION TO
`TERMINATE INTER PARTES REVIEW PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`Authorization for this motion was given by the Board via email sent to the
`
`parties on September 17, 2021. Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §
`
`42.72, Microsoft Corporation (“Petitioner”) and Worlds Inc. (“Patent Owner”)
`
`(collectively, “the Parties”) hereby provide notice that they have reached a
`
`settlement agreement and jointly request termination of the above-captioned inter
`
`partes review.
`
`I.
`
`Statement of Facts
`The basis for this Joint Motion is the settlement of disputes between the
`
`Parties relating to U.S. Patent No. 8,082,501 (the “’501 Patent”).
`
`Patent Owner dismissed with prejudice its claims relating to the ’501 Patent
`
`in the co-pending district court litigation. No other litigation or proceeding
`
`between the Patent Owner and Petitioner involving the subject ’501 Patent is
`
`pending. The Patent Owner and Petitioner have settled their dispute as to the ’501
`
`Patent, and have agreed to jointly move to terminate this inter partes review.
`
`II.
`
`Standard for Termination
`A joint motion to terminate generally “must (1) include a brief explanation as
`
`to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`
`
`1
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014).
`
`III. Termination Is Appropriate
`Under 35 U.S.C. § 317(a), “[a]n 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.” Institution was granted on June 16, 2021. Paper
`
`No. 11. The deadline for the Patent Owner’s Response is currently September 29,
`
`2021. Paper No. 16 at 1. This proceeding is thus in the preliminary stage, the
`
`record lacks full briefing on the trial issues, and the Board has accordingly not
`
`decided the merits of the proceeding.
`
`As the Office Patent Trial Practice Guide acknowledges, “[t]here are strong
`
`public policy reasons to favor settlement between parties to a[n] [inter partes
`
`review] proceeding. . . . The Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement, unless the Board has already decided the
`
`merits of the proceeding . . . .” 77 Fed. Reg., 48,756, 48,768 (Aug. 14, 2012).
`
`Indeed, maintaining this proceeding would serve as a disincentive for parties in
`
`similar situations to settle if it is perceived that an inter partes review would
`
`continue in spite of a settlement.
`
`
`
`2
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`By granting the present Motion, the Board and the Parties can conserve
`
`resources, and no public interest factors weigh against termination of this
`
`proceeding. Thus, termination is proper here.
`
`IV. Related Proceedings
`As for requirements (2) and (4), the table below identifies all parties in a
`
`district court litigation that involves the ’501 Patent, and discusses the current
`
`status of the litigation with respect to each party to the litigation. See Heartland
`
`Tanning, Inc., Paper No. 26, at *2.
`
`Case Caption and Parties
`Worlds, Inc. v. Activision Blizzard,
`Inc., et al, Case No. 1:12-cv-10576
`(D. Mass.)
`
`Current Status
`The ’501 Patent was found invalid as
`directed to ineligible subject matter
`under 35 U.S.C. § 101 on April 30,
`2021. See Paper 9; Ex. 2100. An
`appeal is currently pending before the
`U.S. Court of Appeals for the Federal
`Circuit, Case No. 2021-1990.
`
`
`
`As for requirements (3) and (4), this proceeding is the sole proceeding
`
`directed to the ’501 Patent currently before the Office.
`
`V. Agreement in Writing Submitted to the Board
`As required by statute, the Parties are filing concurrently herewith, as a
`
`separate submission, a Joint Request to File Settlement Agreement as Business
`
`Confidential Information Pursuant to 35 U.S.C. § 317(b), along with a true and
`
`correct copy of the written settlement agreement in connection with this matter.
`
`
`
`3
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`The Parties request that the settlement agreement be treated as business
`
`confidential information and be kept separate from the files of the ’501 Patent,
`
`pursuant to 37 C.F.R. 42.74(c). The Parties certify that there are no other
`
`agreements or understandings between Petitioners and Patent Owner made in
`
`connection with or in contemplation of the termination of the inter partes review
`
`proceedings.
`
`VI. Conclusion
`For the reasons stated above, the Parties respectfully request that the Board
`
`terminate the inter partes review proceedings in IPR2021-00277.
`
`
`
`
`
`
`
`4
`
`
`
`DATED: September 20, 2021
`
`Respectfully Submitted,
`
`Case IPR2021-00277
`Patent 8,082,501
`
`
`
`
`
`
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`
`/Wayne M. Helge/
`
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`Davidson Berquist Jackson & Gowdey L.L.P.
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2021-00277
`Patent 8,082,501
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on September
`
`20, 2021, a complete and entire copy of this PETITIONERS’ AND PATENT
`
`OWNER’S JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317(a) was provided via email, to
`
`the Patent Owner by serving the correspondence addresses of record as follows:
`
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`Davidson Berquist Jackson & Gowdey L.L.P.
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`Email: anoto@dbjg.com
`
`
`
`
`
`
`
`/Michael Stanwyck/
`Michael Stanwyck
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
