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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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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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5 Notice: Decision On Request for Authorization to File Motion

Document IPR2013-00304, No. 5 Notice - Decision On Request for Authorization to File Motion (P.T.A.B. Jun. 13, 2013)
Counsel for Oracle initiated a telephone conference call on June 12, 2013, to request permission to file a motion for expediting this proceeding so that if a trial is
That inter partes review was instituted on May 17, 2013, with respect to claims 6, 8, and 14, based on a petition filed by Oracle on the same patent.
Discussion Oracle’s proposed expedited schedule contemplates a shortening of the time periods applicable to petitioner, patent owner, as well as the Board.
efficiency will not be gained by expediting the schedule, because even under Oracle’s proposal, the two cases will not be at approximately the same stage until after all discovery periods have been completed.
There are insufficient reasons for the Board to exercise discretion to adopt the expedited schedule proposed by Oracle and opposed by Clouding.
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3 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded

Document IPR2013-00304, No. 3 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded (P.T.A.B. May. 30, 2013)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
Patent Owner may also file an election to waive the preliminary response to expedite the proceeding.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
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8 Motion: Joint request for confidential treatment

Document IPR2013-00304, No. 8 Motion - Joint request for confidential treatment (P.T.A.B. Jul. 19, 2013)
Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner Oracle Corporation and Patent Owner Clouding IP, LLC jointly request to file the Settlement Agreement, including the entirety of Exhibit 1 to the Joint Motion to Terminate Proceeding, as business confidential information, which shall be kept separate from the file of the involved patents.
Respectfully submitted,
550 San Jose, CA 95113 Attorneys for Patent Owner
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7 Motion: Joint motion to terminate

Document IPR2013-00304, No. 7 Motion - Joint motion to terminate (P.T.A.B. Jul. 19, 2013)

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1 Petition: IPR Petition 2 US 5944839

Document IPR2013-00304, No. 1 Petition - IPR Petition 2 US 5944839 (P.T.A.B. May. 23, 2013)

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