BestBuy.com, LLCv.Pi-Net International, Inc.

Patent Trial and Appeal Board

Aug 4, 2014

12628066 (P.T.A.B. Aug. 4, 2014)

Trial@uspto.gov
571-272-7822
Paper 15
Entered: August 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BESTBUY.COM, LLC; DILLARD’S INC.; KOHL’S DEPARTMENT
STORES, INC.; OFFICE DEPOT, INC.; OFFICE MAX, INC.;
TARGET CORP.; VICTORIA’S SECRET DIRECT
BRAND MANAGEMENT, LLC;
WALGREEN CO.; AND WAL-MART STORES, INC.,
Petitioner,

v.

PI-NET INTERNATIONAL, INC.,
Patent Owner.
____________

Case CBM2014-00089
Patent 8,346,894 B2
____________

Before, KARL D. EASTHOM, WILLIAM V. SAINDON, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

JUDGMENT
TERMINATION OF THE PROCEEDING

37 C.F.R. § 42.73

Case CBM2014-00089
Patent 8,346,894 B2

2

The parties have requested that this trial proceeding be terminated pursuant
to a settlement between the Patent Owner and each individual petitioner entity. On
July 2, 2014, the Board authorized the parties to file a Joint Motion to Terminate
and a Joint Request to File the Settlement as Business Confidential under
37 C.F.R. 42.74(c). Paper 12. On July 21, 2014, the parties filed a Joint Motion
Terminate and a Joint Request to Keep Separate (“Seal”) concerning the settlement
agreements, Paper Nos. 13, 14. See 35 U.S.C. § 327(b); 37 C.F.R. § 42.74. With
their Joint Motion to Terminate and Seal, the parties also filed a copy of a written
settlement agreement with each petitioner entity. Ex. Nos. 1036-1043.
The parties have moved to terminate this proceeding in view of their
settlement of their underlying litigation. A decision by the Board to institute a trial
has not yet been entered. Thus, this matter was in the preliminary stages at the
time the parties moved to terminate. U.S. Patent 8,346,894 B2, which is the
subject of this proceeding, is also the subject of CBM2014-00097, CBM2014-
00101, IPR2014-00413 and IPR2014-00414. Those proceedings will not be
affected by the termination of this covered business method patent review. Under
these circumstances, the Board determines that it is appropriate to enter judgment
1

and terminate the trial without rendering a final written decision.
37 C.F.R. § 42.72.
It is, therefore,
ORDERED that the joint motion to terminate the proceeding is GRANTED
and the proceeding is hereby terminated;
FURTHER ORDERED that the parties’ joint request that the settlement
agreements be treated as business confidential information which shall be kept

1
A “judgment” means a final written decision by the Board or a termination of a
proceeding. 37 C.F.R. § 42.2.
Case CBM2014-00089
Patent 8,346,894 B2

3

separate from the file of the involved patents under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

PETITIONER:

David Weaver
arunachalam-veteam@velaw.com

Syed Fareed
sfareed@velaw.com

PATENT OWNER:

Bryan Boyle
bboyle@carrferrell.com

Keith Kline
kkline@carrferrell.com