DealerSocket, Inc.v.AutoAlert, LLC

Patent Trial and Appeal Board

May 28, 2015

13076208 (P.T.A.B. May. 28, 2015)

Trials@uspto.gov Paper 40
571-272-7822 Entered: May 28, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DEALERSOCKET, INC.,
Petitioner,

v.

AUTOALERT, INC.,
Patent Owner.
____________

Cases CBM2014-00132 (Patent 8,095,461 B2)
CBM2014-00139 (Patent 8,396,791 B2)
CBM2014-00146 (Patent 8,086,529 B2)
CBM2014-00201 (Patent 7,827,099 B1)
CBM2014-00202 (Patent 7,827,099 B1)
CBM2014-00203 (Patent 8,005,752 B1)1
____________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding after Institution
37 C.F.R. § 42.73

1 This Judgment is entered in each of the above-identified proceedings.
CBM2014-00132 (Patent 8,095,461 B2) CBM2014-00201 (Patent 7,827,099 B1)
CBM2014-00139 (Patent 8,396,791 B2) CBM2014-00202 (Patent 7,827,099 B1)
CBM2014-00146 (Patent 8,086,529 B2) CBM2014-00203 (Patent 8,005,752 B1)

2
Pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74, the parties filed a
corrected Joint Motion to Terminate Proceeding (Paper 392), a corrected Joint
Motion to File Settlement Agreement as Business Confidential Information
(Paper 40), and a true copy of their Written Settlement Agreement (Exhibit 30013),
in each of the above-identified proceedings. All prior versions of the Joint
Motions (Papers 34, 35, 37, and 38) will be expunged.
According to the Joint Motion to Terminate, the parties have executed the
Written Settlement Agreement to resolve all disputes between them as to the
patents involved here in these proceedings before us. Paper 39, 2. Under the
Written Settlement Agreement, the parties have caused the related district court
proceeding, AutoAlert, LLC v. DealerSocket, Inc., No. SACV13-00657 (C.D. Cal.),
to be dismissed in its entirety with prejudice. Id. The Joint Motion to Terminate
further indicates that Petitioner is the only defendant in that related district court
proceeding, and the patents at issue in these proceedings are not involved in any
other pending litigation or proceeding. Id. at 3.
In the Joint Motion to Terminate, Patent Owner also represents that no
litigation or any other proceeding involving these patents is contemplated in the
foreseeable future. Id. Patent Owner urges us to terminate these proceedings
before us, with respect to both Petitioner and Patent Owner, without rendering a
final written decision. Id. at 3–5.

2 All citations are to CBM2014-00132, unless otherwise noted.
3 Exhibit 3001 should have been numbered in accordance with 37 C.F.R.
§ 42.63(c) (“for the patent owner, the range is 2001–2999”).
CBM2014-00132 (Patent 8,095,461 B2) CBM2014-00201 (Patent 7,827,099 B1)
CBM2014-00139 (Patent 8,396,791 B2) CBM2014-00202 (Patent 7,827,099 B1)
CBM2014-00146 (Patent 8,086,529 B2) CBM2014-00203 (Patent 8,005,752 B1)

3
Although we instituted these proceedings, no final written decision has been
made in any of the proceedings. As noted in the Joint Motion to Terminate, the
statutory condition for termination under 35 U.S.C. § 327(a) has been satisfied, and
terminating these proceedings at this juncture would promote efficiency, reduce
cost to the parties, and provide a definitive resolution of all disputes between the
parties with respect to the involved patents. Id. Based on the facts of these
proceedings before us, we determine that it is appropriate to enter judgment in each
case. See 35 U.S.C. § 327(a); 37 C.F.R. § 42.73.
Accordingly, it is:
ORDERED that the corrected Joint Motion to Terminate filed in each of the
above-identified proceedings is granted;
FURTHER ORDERED that these proceedings are hereby terminated as to
all parties;
FURTHER ORDERED that the parties’ joint request that their Written
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. § 327(b) and 37 C.F.R. § 42.74(c), is granted; and
FURTHER ORDERED that the following papers will be expunged:
Case CBM2014-00132, Papers 34, 35, 37, and 38; Case CBM2014-00139,
Papers 35, 36, 38, and 39; Case CBM2014-00146, Papers 33, 34, 36, and 37;
Case CBM2014-00201, Papers 19, 20, 22, and 23; Case CBM2014-00202,
Papers 19, 20, 22, and 23; and Case CBM2014-00203, Papers 14, 15, 17, and 18.

CBM2014-00132 (Patent 8,095,461 B2) CBM2014-00201 (Patent 7,827,099 B1)
CBM2014-00139 (Patent 8,396,791 B2) CBM2014-00202 (Patent 7,827,099 B1)
CBM2014-00146 (Patent 8,086,529 B2) CBM2014-00203 (Patent 8,005,752 B1)

4

For PETITIONER:

Richard Gilmore
2rgilmore@mabr.com

For PATENT OWNER

Craig S. Summers
Brenton R. Babcock
David G. Jankowski
Daniel Fullerton
2css@knobbe.com
2brb@knobbe.com
2dgj@knobbe.com
2dzf@knobbe.com