Callidus Software Inc.v.TQP Development, LLC

Patent Trial and Appeal Board

Dec 11, 2013

07872674 (P.T.A.B. Dec. 11, 2013)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Entered: December 11, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CALLIDUS SOFTWARE INC.
Petitioner
v.
TQP DEVELOPMENT, LLC
Patent Owner
_______________

Case CBM2014-00007
Patent 5,412,730
_______________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, AND PATRICK
M. BOUCHER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

Case CBM2014-00007
Patent 5,412,730

2

On December 3, 2013, the parties, Callidus Software Inc. and TQP
Development, LLC, filed a joint motion to terminate this proceeding, along with a
true copy of their written settlement agreement, made in connection with the
termination of the instant proceeding, in accordance with 35 U.S.C. § 327(a) and
37 C.F.R. § 42.74(b). Paper 11. The parties also filed 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). Paper 12.
The joint motion to terminate indicates that Petitioner will no longer
participate in the proceeding even if the Board does not terminate the proceeding.
Paper 11, 2. The motion also indicates that the parties have agreed to the dismissal
of a related district court case by filing a Stipulated Motion for Dismissal with
Prejudice.
1
Id. at 2, n.2 (attaching Ex. 1036).
Patent Owner has not filed a preliminary response. The Board has not
instituted trial, does not have before it full briefing on the trial issues, and has not
entered a final decision.
Based on the facts of this case, it is appropriate to enter judgment without
rendering a final written decision. See 35 U.S.C. § 327(a); 37 C.F.R. § 42.72.
2

1
TQP Development, LLC v. Callidus Software Inc., Case No. 2:12-cv-00799-JRG
(E.D. Tex.), which is consolidated in TQP Development, LLC v. Chrysler Group,
LLC, Case No. 2:13-cv-00219-JRG (consolidated) (E.D. Tex.).
2
A judgment “means a final written decision by the Board, or a termination of a
proceeding.” 37 C.F.R. § 42.2.
Case CBM2014-00007
Patent 5,412,730

3

It is
ORDERED that the joint motion to terminate CBM2014-00007 is granted;
FURTHER ORDERED that the proceeding is terminated; and
FURTHER ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information kept separate from the
patent file, and made available only to Federal Government agencies on written
request, or to any person on a showing of good cause, pursuant to 35 U.S.C. 317(b)
and 37 C.F.R. 42.74(c), is granted.

For PETITIONER:

Deborah Fishman
DICKSTEIN SHAPIRO LLP
fishmand@dicksteinshapiro.com

PATENT OWNER:

Tarek Fahmi
Amy Embert
Fahmi, Sellers, Embert & Davitz
tarek.fahmi@fseip.com
amy.embert@fseip.com