Digital Empire Limitedv.Hilltop Technology LLC

Patent Trial and Appeal Board

Jun 15, 2015

12148998 (P.T.A.B. Jun. 15, 2015)

Trials@uspto.gov Paper 16
571-272-7822 Entered: June 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DIGITAL EMPIRE LIMITED,
Petitioner,

v.

HILLTOP TECHNOLOGY LLC,
Patent Owner.
_______________

Case IPR2014-00584
Patent 7,864,503 B2
_______________

Before KEN B. BARRETT, JAMES B. ARPIN, and BRIAN P. MURPHY,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

ORDER
Termination of the Proceeding
37 C.F.R. § 42.74

On June 12, 2015, the parties filed a Joint Motion to Terminate (Paper 14,
“Joint Mot.”) pursuant to 35 U.S.C. § 317(a), as well as 37 C.F.R. §§ 42.72 and
42.74(a). Contemporaneously, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
IPR2014-00584
Patent 7,864,503 B2
2
§ 42.74(c), the parties filed a Joint Motion to File Settlement Agreement as
Business Confidential Information (Paper 15) and a true copy of a Settlement
Agreement (Ex. 1020).
Although we are at a late stage in this proceeding and all due dates set forth
in the Scheduling Order (Paper 8) have passed, no final written decision has been
entered. The parties previously have identified a related, co-pending U.S. litigation
between the parties (Paper 5, 2) and now inform us that “[t]he dispute underlying
this proceeding has been conclusively resolved with the assignment of [U.S. Patent
No. 7,864,503 B2 (Ex. 1001, “the ’503 patent”)] to the Petitioner as a joint owner.
There are no other proceedings that involve any third parties and that could be
impacted by the outcome of this proceeding.” See Joint Mot. 2. Thus, the parties
represent that the filed agreement settles all disputes between the parties with
respect to the above-captioned proceeding. Id. Further, we note that, according to
the Office’s Patent Application Information Retrieval system, the ’503 patent
currently is expired due to the non-payment of maintenance fees. Under these
circumstances, we determine that good cause exists to terminate this proceeding at
this late stage, without rendering a final written decision.
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that Joint Motion to File Settlement Agreement as
Business Confidential Information is granted;
IPR2014-00584
Patent 7,864,503 B2
3
FURTHER ORDERED that the Settlement Agreement (Ex. 1020) shall be
treated as business confidential information, to be kept separate from the patent
file; and
FURTHER ORDERED that the case is terminated.

PETITIONER:

Gokalp Bayramoglu
BAYRAMOGLU LAW OFFICES, LLC
gokalp@bayramoglu-legal.com

PATENT OWNER:

Winston Oliver Huff
Deborah Jagai
W.O. HUFF & ASSOCIATES, PLLC
whuff@huffip.com
djagai@huffip.com