ClientConnect Ltd.v.MyMail, Ltd.

Patent Trial and Appeal Board

Jan 7, 2016

10417853 (P.T.A.B. Jan. 7, 2016)

Trials@uspto.gov Paper 33
571-272-7822 Entered: January 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CLIENTCONNECT LTD., CLIENTCONNECT, INC.,
CONDUIT LTD., and PERION NETWORK LTD.
Petitioner,

v.

MYMAIL, LTD.,
Patent Owner.
_______________

Case IPR2015-00269
Patent 8,275,863 B2
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Joint Motion to Terminate Proceeding
37 C.F.R. § 42.72
On January 6, 2016, the parties filed a Joint Motion to Terminate
Proceeding (Paper 31) in the above cited proceeding, as well as a Settlement
Agreement (Ex. 2018), with a Joint Request that Settlement Agreement be
Treated as Business Confidential Information and Kept Separate (Paper 32).
The above filings were authorized pursuant to an email sent by the Board on
January 5, 2016.
Case IPR2015-00269
Patent 8,275,863 B2

2

Under 35 U.S.C. § 317(a), applicable to inter partes review
proceedings, a proceeding 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. This matter is at a stage prior to its final hearing, with
no decision on the merits having been made.
Under 35 U.S.C. § 317(b), any agreement or understanding between
the Patent Owner and a Petitioner, including any collateral agreements
referred to in such agreement or understanding, made in connection with, or
in contemplation of, the termination of the proceeding, shall be in writing,
and a true copy of such agreement or understanding shall be filed in the
Office. The Settlement Agreement appears to be a true copy of the
agreement between the parties, specifies the instant proceeding, and
identifies other matters that are to be settled between the parties. Ex. 2018.
Under these circumstances, we determine that it is appropriate to grant
the Joint Motion to terminate the trial without rendering a final written
decision pursuant to 35 U.S.C. § 318(a). See 37 C.F.R. §§ 42.5(a), 42.72.
Accordingly, it is
ORDERED that the Joint Motion to Terminate Proceeding is granted;
and
FURTHER ORDERED that the Settlement Agreement, Exhibit 2018,
be treated as business confidential information, be designated “Board Only,”
and be kept separate from the file of the involved patent under the provisions
of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Case IPR2015-00269
Patent 8,275,863 B2

3

PETITIONER:
Benjamin W. Hattenbach
Michael R. Fleming
Ian R. Washburn
IRELL & MANELLA LLP
bhattenbach@irell.com
mfleming@irell.com

PATENT OWNER:
Lori A. Gordon
Jon M. Strang
Daniel Block
STERNE, KESSLER, GOLDSTEIN FOX P.L.L.C.
Lgordon-PTAB@skgf.com
Jstrang-PTAB@skgf.com
Dblock-PTAB@skgf.com