09285424 (P.T.A.B. Feb. 12, 2015)

Googlev.Mobilestar Technologies LLC

Patent Trial and Appeal BoardFeb 12, 2015

09285424 (P.T.A.B. Feb. 12, 2015)

Trials@uspto.gov 571-272-7822 Entered: February 12, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GOOGLE, INC., Petitioner, v. RPX CLEARINGHOUSE, LLC, Patent Owner. 1 ____________ Case IPR2015-00079 Patent 5,838,551 2 ____________ Before JONI Y. CHANG, GEORGIANNA W. BRADEN, and KERRY BEGLEY, Administrative Patent Judges. CHANG, Administrative Patent Judge. JUDGMENT Termination of Proceeding 1 Original Patent Owners, Rockstar Consortium US LP and MobileStar Technologies, LLC (collectively, “Rockstar”), assigned their rights to the patents-at-issue to RPX Clearinghouse, LLC. Paper 10, 2. The patents-at- issue are listed in the Appendix of the instant Decision. 2 This Decision addresses the same issues in the cases identified in the Appendix. Therefore, we exercise our discretion to issue one Decision to be entered in each of the identified cases. IPR2015-00079 Patent 5,838,551 2 37 C.F.R. § 42.73 On February 10, 2015, Petitioner, Google Inc. (“Google”), and Patent Owner, RPX Clearinghouse, LLC (“RPX”), filed a Corrected Joint Motion to Terminate in each proceeding listed in the Appendix. Paper 10. 3 The parties also filed a true copy of their Written Settlement Agreement (Ex. 2001), made in connection with the termination of these proceedings, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and a Patent Assignment (Ex. 2002). Additionally, the parties submitted a Corrected Joint Request to have their Written Settlement Agreement and Patent Assignment treated as business confidential under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 11. Pursuant to the Board’s authorization, the parties timely filed a Joint Motion to Terminate and Request in each of the 17 proceedings at issue, on February 9, 2015. Papers 8, 9. The Motions and Requests, however, identified Rockstar as the patent owner, instead of RPX. Id. Subsequently, the Board notified the parties of the improper filings and authorized them to file the Corrected Motions and Requests. For the reasons set forth below, the Corrected Joint Motions to Terminate and Corrected Requests are granted. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice 3 For clarity and expediency, we treat IPR2015-00079 as representative, and all citations are to IPR2015-00079 unless otherwise noted. IPR2015-00079 Patent 5,838,551 3 Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Google filed 17 Petitions for inter partes reviews of the patents listed in the Appendix. RPX has not filed a Patent Owner Preliminary Response. The Board also has not determined, under 35 U.S.C. § 314, whether or not to institute an inter partes review in these proceedings. As no trial has been instituted based on Google’s Petitions, the proceedings at issue are in the preliminary proceeding 4 stage. In their Corrected Joint Motions to Terminate, the parties indicate that they have reached a settlement as to all the disputes involving the patents-at-issue. Paper 10, 3; Ex. 2001. Upon consideration of the facts before us, we determine that it is appropriate to terminate each of the 17 proceedings as to both parties, and enter judgment. For the foregoing reasons, it is hereby: ORDERED that the Corrected Joint Motions to Terminate for the inter partes reviews identified in the Appendix are granted; FURTHER ORDERED that each of these proceedings is terminated as to all parties—namely, Google and RPX; and FURTHER ORDERED that the Corrected Joint Request, in each of these proceedings, to have the parties’ Written Settlement Agreement (Ex. 2001) and Patent Assignment (Ex. 2002) 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 4 A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted. 37 C.F.R. § 42.2. IPR2015-00079 Patent 5,838,551 4 person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted. IPR2015-00079 Patent 5,838,551 5 APPENDIX Case No. U.S. Patent No. IPR2015-00079 5,838,551 IPR2015-00090 6,937,572 B1 IPR2015-00091 6,937,572 B1 IPR2015-00197 6,128,298 IPR2015-00200 6,333,973 B1 IPR2015-00201 6,333,973 B1 IPR2015-00202 6,128,298 IPR2015-00204 6,037,937 IPR2015-00205 6,037,937 IPR2015-00206 6,128,298 IPR2015-00207 6,333,973 B1 IPR2015-00210 6,128,298 IPR2015-00211 6,128,298 IPR2015-00212 6,128,298 IPR2015-00215 6,765,591 B2 IPR2015-00235 6,463,131 B1 IPR2015-00236 6,463,131 B1 IPR2015-00079 Patent 5,838,551 6 For PATENT OWNER: Kenneth J. Weatherwax Parham Hendifar GOLDBERG, LOWENSTEIN & WEATHERWAX, L.L.P. weatherwax@glwllp.com hendifar@glwllp.com For PETITIONER: David C. Kiernan Aaron P. Maurer WILLIAMS & CONNOLLY, L.L.P. dkiernan@wc.com amaurer@wc.com Scott A. McKeown Greg Gardella OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. cpdocketmckeown@oblon.com cpdocketgardella@oblon.com

Google v. Mobilestar Technologies LLC