Intralinks, Inc.v.Lone Star Document Management LLC

Patent Trial and Appeal Board

Feb 1, 2016

09215593 (P.T.A.B. Feb. 1, 2016)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: February 1, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

INTRALINKS, INC.,
Petitioner,
v.
LONE STAR DOCUMENT MANAGEMENT, LLC,
Patent Owner.

Case CBM2016-00005
Patent 6,918,082

Before MIRIAM L. QUINN, BEVERLY M. BUNTING, and KEVIN W.
CHERRY, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.

JUDGMENT
Termination of Proceedings
35 U.S.C. § 327(a) and 37 C.F.R. § 42.72

CBM2016-00005
Patent 6,918,082

2

On January 19, 2016, Intralinks, Inc. and Lone Star Document
Management, LLC (collectively referred to as “the parties”) filed a joint
motion to terminate this covered business method patent review involving
U.S. Patent No. 6,918,082 pursuant to a settlement agreement. Paper 6.
Authorization to file the motion was given in a phone conference between
the Board and the parties on January 8, 2016. Id. at 1. The parties also filed
a true copy of their written settlement agreement, made in connection with
the termination of this proceeding, in accordance with 35 U.S.C. § 327(b)
and 37 C.F.R. § 42.72. Ex. 1003. Additionally, the parties request to have
their settlement agreement treated as confidential business information under
35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). Paper 6 at 2–3.
The parties submit that termination is appropriate because the parties
have settled their dispute regarding the challenged patent and have reached
agreement to terminate this covered business method review. Id. at 2. The
parties represent that the settlement agreement ends all patent disputes
between the parties, including their pending district court litigation, which
was dismissed without prejudice. Id. at 1–2.
The parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability.
37 C.F.R. § 42.74(a). Generally, however, 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.
CBM2016-00005
Patent 6,918,082

3

14, 2012). The instant proceeding is still in the preliminary stages,1 and the
Board has not issued yet a decision to institute a covered business method
review.
Under the circumstances, based on the record before us, we determine
that it is appropriate to terminate this proceeding with respect to both
Petitioner and Patent Owner, at this early juncture, to promote efficiency and
minimize unnecessary costs. Based on the facts, it is appropriate to enter
judgment terminating this proceeding without rendering a final written
decision and treat the settlement agreement as business confidential
information. See 35 U.S.C. § 327; 37 C.F.R. §§ 42.72 and 42.74(c).

ORDER
In consideration of the foregoing, it is
ORDERED that the parties’ joint request that the settlement
agreement (Exhibit 1003) be treated as business confidential information
under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), to be kept separate from
the patent file, is GRANTED;
FURTHER ORDERED that the joint motion to terminate CBM2016-
00005 is GRANTED; and
FURTHER ORDERED that this proceeding is TERMINATED.

1 The deadline to file a patent owner preliminary response is February 3,
2016.
CBM2016-00005
Patent 6,918,082

4

For PETITIONER:

Jonathan Bockman
jbockman@mofo.com

Fahd Hussein Patel
fpatel@mofo.com

For PATENT OWNER:

Timothy Devlin
tdevlin@devlinlawfirm.com

Xiyan Zhang
xzhang@devlinlawfirm.com