Intralinks, Inc.v.Lone Star Document Management LLCDownload PDFPatent Trial and Appeal BoardFeb 1, 201609215593 (P.T.A.B. Feb. 1, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation