eBay Inc.v.Purple Leaf, LLC

Patent Trial and Appeal Board

Feb 16, 2016

13691312 (P.T.A.B. Feb. 16, 2016)

Trials@uspto.gov Paper No. 36
571.272.7822 Entered: February 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
EBAY INC. and PAYPAL, INC.,
Petitioner,
v.
PURPLE LEAF, LLC,
Patent Owner.
_______________

Case CBM2015-00052
Patent 8,744,963 B1
_______________

Before BART A. GERSTENBLITH, JAMES A. TARTAL, and
BRIAN P. MURPHY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

TERMINATION OF TRIAL
37 C.F.R. § 42.72

I. DISCUSSION
Purple Leaf, LLC (“Patent Owner”) and eBay Inc. and PayPal, Inc.
(collectively, “Petitioner”) filed a joint motion to terminate the proceeding
pursuant to 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. Paper 33. Along
with their motion, the parties filed a “true and correct” copy of a document
they describe as the parties’ agreement (Ex. 1053). Id. at 2. The parties
CBM2015-00052
Patent 8,744,963 B1

2
represent that there are no other agreements, oral or written, between them
made in connection with, or in contemplation of, the termination of this
proceeding. Id. The parties also filed a joint request to treat the parties’
agreement as business confidential information and kept separate under the
provisions of 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). Paper 34.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement. See, e.g., Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Although trial has
been instituted, we have not decided the merits of the proceeding. See 35
U.S.C. § 327(a) (“A post-grant review instituted under this chapter 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.”); 37 C.F.R.
§ 42.72 (“The Board may terminate a trial without rendering a final written
decision, where appropriate . . . .”).1 We are persuaded that, under these
circumstances, termination of this proceeding is appropriate.
II. ORDER
Accordingly, it is:
ORDERED that the joint motion to terminate this proceeding
(Paper 33) is granted;
FURTHER ORDERED that the joint request to treat the agreement
(Ex. 1053) as business confidential information, kept separate from the file
of the involved patent, and made available only to Federal Government

1 See also 37 C.F.R. § 42.300(a) (“A covered business method patent review
is a trial subject to the procedures set forth in subpart A of this part and is
also subject to the post-grant review procedures set forth in subpart C . . . .”).
CBM2015-00052
Patent 8,744,963 B1

3
agencies on written request, or to any person on a showing of good cause,
under the provisions of 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c)
(Paper 34), is granted; and
FURTHER ORDERED that this trial is terminated.

CBM2015-00052
Patent 8,744,963 B1

4
For PETITIONER:

NAVEEN MODI
JOSEPH E. PALYS
Paul Hastings LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com

For PATENT OWNER:

SCOTT BALDERSTON
Symbus Law Group, LLC
sbalderston@symbus.com