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Inter Partes Review of U.S. Pat. 5,944,839

Docket IPR2013-00304, Patent Trial and Appeal Board (May 23, 2013)
Jameson Lee, Joni Chang, Michael Kim, Rama Elluru, presiding
Case TypeInter Partes Review
Patent
5944839
Petitioner Oracle Corporation
Patent Owner Clouding IP, LLC
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Oracle Corporation v. Clouding IP, LLC

Docket IPR2013-00095, Patent Trial and Appeal Board (Dec. 21, 2012)
Jameson Lee, Joni Chang, Michael Kim, Rama Elluru, presiding
Case TypeInter Partes Review
Patent
5944839
Petitioner Oracle Corporation
Patent Owner Clouding IP, LLC
Assignee DBD CREDIT FUNDING LLC, AS COLLATERAL AGENT
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20 Order: Order Scheduling Order

Document IPR2013-00095, No. 20 Order - Order Scheduling Order (P.T.A.B. Jul. 31, 2013)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
a. The petitioner must file any motion for an observation on the cross- examination testimony of a reply witness (see Section C) by DUE DATE 4. b.
Each party must file any motion to exclude evidence (37 C.F.R § 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
a. The patent owner must file any reply to a petitioner observation on cross- examination testimony by DUE DATE 5. b.
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19 Institution Decision: Decision Institution of Inter Partes Review

Document IPR2013-00095, No. 19 Institution Decision - Decision Institution of Inter Partes Review (P.T.A.B. Jul. 31, 2013)
The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a) which provides as follows: THRESHOLD -- The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
One such program adopts a “canned” approach, which merely schedules a fixed set of tools to execute at a predetermined time, and thus is inflexible and performs too much maintenance.
According to Gürer (Ex. 1003, Abstract:3-5), artificial intelligence technologies play an important role in the problem solving and reasoning techniques that are employed in fault management.
The portion of Gürer’s disclosure relating to determining a solution of the diagnosed problem begins on page 8, line 10, subsequent to the text quoted by Oracle.
In light of that disclosure, and as in the case of Barnett as discussed above, one with ordinary skill in the art would have known to store the state of the computer system having the problem, so that the user may consider the situation and provide an appropriate response.
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18 Final Decision: Judgment Termination of Proceeding 4273

Document IPR2013-00095, No. 18 Final Decision - Judgment Termination of Proceeding 4273 (P.T.A.B. Jul. 22, 2013)
With the joint motion, the parties filed a copy of their written settlement agreement covering Patent 5,944,839 involved in this inter partes review.
That means Oracle will not file a reply to any Patent Owner Response or an opposition to any Motion to Amend Claims.
The Board asked the parties to indicate in their joint motion to terminate proceeding whether there will be codefendants remaining in such related litigation.
The Board determines that in the circumstances of this case it is appropriate to terminate review both as to petitioner Oracle and patent owner Clouding without rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
It is ORDERED that the joint motion to terminate IPR2013-00095 is GRANTED, and this inter partes review is hereby terminated as to all parties including petitioner Oracle and patent owner Clouding; and FURTHER ORDERED that the parties’s joint request to have their settlement agreement treated as business confidential information under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.
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14 Notice: Order Conduct of the Proceeding 37 CFR 425

Document IPR2013-00095, No. 14 Notice - Order Conduct of the Proceeding 37 CFR 425 (P.T.A.B. Jul. 15, 2013)
On July 11, 2013, a telephone conference call was held between respective counsel for the parties and Judges Lee, Chang, and Elluru.
The rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding2 shall be in writing and filed with the Board.
With respect to having the settlement agreement treated as business confidential information under 37 C.F.R. § 42.74(c), the Board noted that the parties must file the confidential settlement agreement electronically via the Patent Review Processing System (PRPS) in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
The parties were also directed to FAQ G2 on the Board’s website page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their settlement agreement as confidential.
FURTHER ORDERED that, for the exhibit that is the settlement agreement filed in each proceeding, the parties may file a separate paper in that proceeding requesting that the settlement agreement be treated as business confidential information as specified by 37 C.F.R. § 42.74(c); and FURTHER ORDERED that any confidential settlement agreement must be filed electronically via PRPS in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
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10 Final Decision: Judgement Termination of Proceeding

Document IPR2013-00304, No. 10 Final Decision - Judgement Termination of Proceeding (P.T.A.B. Jul. 22, 2013)
With the joint motion, the parties filed a copy of their written settlement agreement covering Patent 5,944,839 involved in this proceeding.
Case IPR2013-00304 Patent 5,944,839 July 19, 2013, a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The Board asked the parties to indicate in their joint motion to terminate this proceeding whether there will be codefendants remaining in such related litigation.
Oracle represents that it will no longer participate, even if the Board institutes an inter partes review and commences a trial.
That means even if an inter partes review is instituted, Oracle will not file a reply to any Patent Owner Response or an opposition to any Motion to Amend Claims.
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6 Notice: Order Conduct of the Proceeding 37 CFR 425

Document IPR2013-00304, No. 6 Notice - Order Conduct of the Proceeding 37 CFR 425 (P.T.A.B. Jul. 15, 2013)
On July 11, 2013, a telephone conference call was held between respective counsel for the parties and Judges Lee, Chang, and Elluru.
The rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding2 shall be in writing and filed with the Board.
With respect to having the settlement agreement treated as business confidential information under 37 C.F.R. § 42.74(c), the Board noted that the parties must file the confidential settlement agreement electronically via the Patent Review Processing System (PRPS) in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
The parties were also directed to FAQ G2 on the Board’s website page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their settlement agreement as confidential.
FURTHER ORDERED that, for the exhibit that is the settlement agreement filed in each proceeding, the parties may file a separate paper in that proceeding requesting that the settlement agreement be treated as business confidential information as specified by 37 C.F.R. § 42.74(c); and FURTHER ORDERED that any confidential settlement agreement must be filed electronically via PRPS in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).
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