`571-272-7822
`
`
`
`
`
`
`
`Paper 20
`Entered: September 23, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`IPR2021-00277
`Patent 8,082,501 B2
`____________
`
`
`
`Before MELISSA A. HAAPALA, Senior Lead Administrative Patent Judge,
`KARL D. EASTHOM, and KEN B. BARRETT, Administrative Patent
`Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317, 37 C.F.R. § 42.74
`
`
`
`IPR2021-00277
`Patent 8,082,501 B2
`
`On June 16, 2021, we instituted an inter partes review of claims 1–8,
`
`10, 12, and 14–16 of U.S. Patent No. 8,082,501 B2 (“the ’501 patent”).
`Paper 11. On September 20, 2021, with our authorization, Petitioner
`Microsoft Corporation and Patent Owner Worlds Inc. (collectively, “the
`Parties”) filed a Joint Motion to Terminate Inter Partes Review Proceedings
`Pursuant to 35 U.S.C. § 317(a). Paper 18 (“Mot.” or “Motion”). The Parties
`represent in the Motion that they have settled their dispute as to the ’501
`patent. Mot. 1. The Motion was accompanied by a document (Ex. 1042)
`that the Parties represent to be “a true and correct copy of the written
`settlement agreement in connection with this matter.” Id. at 3. 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.” Id. at 4.
`
`The Parties also filed, with our authorization, a Joint Request to File
`Settlement Agreement as Business Confidential Information Pursuant to 35
`U.S.C. § 317 (Paper 19), requesting that the settlement agreement be treated
`a business confidential information and be kept separate from the file of
`the ’501 patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`The Parties represent in the Motion that Patent Owner dismissed with
`prejudice its claims relating to the ’501 patent in the co-pending district
`court litigation, which we understand to be Worlds Inc. v. Microsoft
`Corporation, 6:20-cv-872 (W.D. Tex. 2020). See Mot. 1; Paper 2, 61;
`Paper 10, 1. The Parties also represent that there is no other litigation or
`proceeding between them involving the ’501 patent. Id. The Parties
`additionally indicate that the claims of the ’501 patent have been determined
`to be invalid under 35 U.S.C. § 101 in Worlds Inc. v. Activision Blizzard,
`
`2
`
`
`
`IPR2021-00277
`Patent 8,082,501 B2
`
`Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc., 1:12-cv-
`10576 (D. Mass. 2012), and that the case currently is on appeal to the U.S.
`Court of Appeals for the Federal Circuit (Case No. 2021-1990). Id. at 3.
`
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov.
`2019), available at https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf; see 37 C.F.R. § 42.72. Under the circumstances presented here,
`we determine that it is appropriate to terminate this proceeding with respect
`to both Petitioner and Patent Owner. Accordingly, we grant the Parties’
`Motion to Terminate the proceeding.
`
`We also determine that the Parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have their settlement agreement
`treated as business confidential information and kept separate from the
`patent files of the challenged patents. Thus, we grant the Parties’ joint
`request to treat the settlement agreement as business confidential
`information.
`
`Accordingly, it is
`
`ORDERED that the Joint Motion to Terminate Inter Partes Review
`Proceedings Pursuant to 35 U.S.C. § 317(a) is granted;
`
`FURTHER ORDERED that this proceeding is terminated;
`
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information Pursuant to 35 U.S.C.
`§ 317 is granted; and
`
`3
`
`
`
`IPR2021-00277
`Patent 8,082,501 B2
`
`FURTHER ORDERED that Exhibit 1042 is to be kept separate from
`
`the file of the involved U.S. Patent No. 8,082,501 B2 under the provisions of
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00277
`Patent 8,082,501 B2
`
`
`PETITIONER:
`
`Walter Renner
`Axf-ptab@fr.com
`
`David Holt
`Holt2@fr.com
`
`
`PATENT OWNER:
`
`Wayne Helge
`whelge@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
`
`
`5
`
`
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