EBAY, INC. and GSI COMMERCE SOLUTIONS, INC.v.CRONOS TECHNOLOGIES, LLC

Patent Trial and Appeal Board

Dec 16, 2013

08351795 (P.T.A.B. Dec. 16, 2013)

Trials@uspto.gov Paper 12
571-272-7822 Entered: December 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EBAY, INC. and GSI COMMERCE SOLUTIONS, INC.
Petitioners

v.

CRONOS TECHNOLOGIES, LLC
Patent Owner
____________

Case CBM2013-00048
Patent 5,664,110
____________

Before THOMAS L. GIANNETTI, JAMES B. ARPIN, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

ORDER
Termination of the Proceeding
37 C.F.R. § 42.73(a)

Case CBM2013-00048
Patent 5,664,110
2
On December 11, 2013, the parties filed a Joint Motion to Terminate
Proceeding (“Mot.”; Paper 9) pursuant to 35 U.S.C. § 327(a). In addition, pursuant
to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), Patent Owner filed a true copy of a
Third Party License Agreement (Ex. 2001)
1
along with a Request to Keep Separate
(Paper 10) identifying the license agreement as business confidential and
requesting that the license be kept separate from the patent file.
This case is in the preliminary proceeding
2
stage; no decision whether to
institute a trial has been made. The parties have not identified any co-pending
district court litigation between the parties (Mot. 2-6; see also Pet. 2); and the
parties have represented that Patent Owner has granted a license under Patent No.
US 5,664,110 that extends to Petitioners and to Petitioners’ customers (Mot. 1).
Thus, in accordance with the Order (Paper 8 at 2) regarding the conduct of this
proceeding, the parties have explained why termination is appropriate in this
proceeding. Mot. 1. Further, the parties have identified the related district court
litigation in which infringement or invalidity of the claims of Patent No. US
5,664,110 has been alleged, and specifically discussed the current status of each
such related litigation with respect to each party to that litigation. Id. at 2-6.
Finally, in accordance with the Order (Paper 8 at 3), “[t]he Parties certify that,
beyond the third party license, there are no other written or oral agreements or

1
Patent Owner incorrectly filed the license agreement as Ex. 1001. Because
Petitioners previously filed an exhibit numbered Ex. 1001, the Board has
renumbered the exhibit as Ex. 2001.
2
A preliminary proceeding begins with the filing of a petition for instituting a trial
and ends with a written decision as to whether trial will be instituted.
37 C.F.R. § 42.2.
Case CBM2013-00048
Patent 5,664,110
3
understandings, including any collateral agreements, between the Parties, including
but not limited to other licenses, covenants not to sue, confidentiality agreements,
or other agreements of any kind, that are made in connection with, or in
contemplation of, the termination of the CBM proceeding.” Mot. 1. Under these
circumstances, the Board determines that it is appropriate to terminate the case
without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the Joint
Motion to Terminate Proceeding is granted.
Accordingly, it is
ORDERED that the Patent Owner’s request that the license agreement (Ex.
2001) be treated as business confidential information, to be kept separate from the
patent file, is GRANTED;
FURTHER ORDERED that the Joint Motion to Terminate Proceeding is
GRANTED;
3
and
FURTHER ORDERED that the proceeding is TERMINATED.

3
Because the Board has granted the parties’ Joint Motion to Terminate Proceeding,
the extended deadline to file patent owner preliminary response is moot. Order
(Paper 8) 3.
Case CBM2013-00048
Patent 5,664,110
4
PETITIONER:

Richard D. McLeod
Deakin T. Lauer
Klarquist Sparkman LLP
rick.mcleod@klarquist.com
deakin.lauer@klarquist.com

PATENT OWNER:

Melvin Barnes
Douglas Bridges
Capital Legal Group, PLLC
barnes@capitallegalgroup.com
bridges@capitallegalgroup.com