Paper 18
`Date: December 4, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`INDEED, INC., MONSTER WORLDWIDE, INC., and
`THE LADDERS.COM, INC.,
`Petitioners,
`
`v.
`
`CAREER DESTINATION DEVELOPMENT, LLC
`Patent Owner.
`____________
`
`
`
`Case CBM2014–00069 (US 8,374,901 B2)
`Case CBM2014–00070 (US 8,374,901 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This decision addresses issues that are identical in the two cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the two cases.
`The parties, however, are not authorized to use this style heading in their papers.
`
`
`Date: December 4, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`INDEED, INC., MONSTER WORLDWIDE, INC., and
`THE LADDERS.COM, INC.,
`Petitioners,
`
`v.
`
`CAREER DESTINATION DEVELOPMENT, LLC
`Patent Owner.
`____________
`
`
`
`Case CBM2014–00069 (US 8,374,901 B2)
`Case CBM2014–00070 (US 8,374,901 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This decision addresses issues that are identical in the two cases. Therefore, we
`exercise our discretion to issue one decision to be entered in each of the two cases.
`The parties, however, are not authorized to use this style heading in their papers.
`
`
`
`CBM2014–00069 (US 8,374,901 B2)
`CBM2014–00070 (US 8,374,901 B2)
`
`
`
`INTRODUCTION
`
`Counsel for both parties filed a Motion to Terminate (Paper 162), along with
`
`a Request to Keep Separate (Paper 17), and Exhibits 2005–2010 on November
`
`26th, 2014, without prior authorization from the Board. On December 3, 2014, a
`
`conference call was held between counsel for the respective parties and Judges
`
`Medley, Petravick, and Busch at the request of the Board.
`
`
`
`DISCUSSION
`
`
`
`A motion to terminate may not be filed without prior Board authorization.
`
`See 37 C.F.R. § 42.20(b). The parties jointly filed the Motion to Terminate,
`
`without authorization. Therefore, the Motion to Terminate, Request to Keep
`
`Separate, and exhibits shall be expunged. See 37 C.F.R. § 42.7(a).
`
`
`
`During the call, the parties sought the required authorization to refile joint
`
`motions to terminate the proceedings. 35 U.S.C. § 327(a) states:
`
`A post-grant review instituted under this chapter 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. . . . If no
`petitioner remains in the post-grant review, the Office may terminate
`the post-grant review or proceed to a final written decision under
`section 328(a).
`
`Generally, the Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48768 (Aug. 14, 2012).
`
`The parties were authorized to file a new joint motion to terminate, as well
`
`as a new request to keep separate, pursuant to 37 C.F.R. § 42.74. The joint motion
`
`2 For expediency, CBM2014–00069 is representative and all subsequent citations
`are to CBM2014–00069 unless otherwise noted.
`
`2
`
`
`
`
`CBM2014–00069 (US 8,374,901 B2)
`CBM2014–00070 (US 8,374,901 B2)
`
`
`must include an explanation why termination is appropriate at this time, which is
`
`after institution of a trial and after the expiration of DUE DATE 1— the time
`
`period for filing a Patent Owner Response. Specifically, the joint motion must
`
`include reasons why the Board should not proceed to make a final determination
`
`on the merits. Furthermore, the joint motion should indicate whether, and to what
`
`extent, each party will continue to participate in this proceeding, if the joint motion
`
`to terminate is denied.
`
`
`
`The joint motion must update the Board as to the status of any other matters
`
`involving U.S. Patent 8,374,901 B2. The joint motion to terminate must be
`
`accompanied by a true copy of the settlement agreement in connection with the
`
`termination of this proceeding, as required by 35 U.S.C. § 327(b) and 37 C.F.R. §
`
`42.74(b). A redacted version of the settlement agreement is not a true copy of the
`
`settlement agreement.
`
`With respect to having the settlement agreement treated as business
`
`confidential information under 37 C.F.R. § 42.74(c), 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 are herein 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. In the motion to terminate, any references
`
`made to an exhibit must be to an exhibit number, and not, for example, to
`
`3
`
`
`“attachment A”, etc.
`
`
`
`
`
`CBM2014–00069 (US 8,374,901 B2)
`CBM2014–00070 (US 8,374,901 B2)
`
`
`ORDER
`
`
`
`In consideration of the foregoing, it is
`
`ORDERED that Papers 16 and 17 and Exhibits 2005–2010 of CBM2014–
`
`00069 and Papers 17 and 18 and Exhibits 2005–2010 of CBM2014–00070 shall be
`
`expunged from the record;
`
`FURTHER ORDERED that the parties are authorized to file a separate joint
`
`motion to terminate in each proceeding;
`
`FURTHER ORDERED that the joint motions are due no later than
`
`December 10, 2014;
`
`FURTHER ORDERED that the joint motions must be accompanied by a
`
`true copy, labeled as an exhibit, of the settlement agreement as required by 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`
`FURTHER ORDERED that the parties may file separate joint motions
`
`requesting that the settlement agreement(s) 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”).
`
`4
`
`
`
`
`
`
`CBM2014–00069 (US 8,374,901 B2)
`CBM2014–00070 (US 8,374,901 B2)
`
`
`
`
`
`For Petitioner:
`
`Brian M. Buroker
`Peter Weinberg
`bburoker@gibsondunn.com
`pweinberg@gibsondunn.com
`
`
`
`For Patent Owner:
`
`James J. Kernell
`David L. Marcus
`jjk@kcpatentlaw.com
`dmarcus@bmlawkc.com
`
`
`
`5
`
`
`
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