Microsoft Corporationv.Nonend Inventions N.V.

Patent Trial and Appeal Board

Feb 3, 2016

11613799 (P.T.A.B. Feb. 3, 2016)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: February 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MICROSOFT CORPORATION,
Petitioner,

v.

NONEND INVENTIONS, N.V.,
Patent Owner.
____________

Case IPR2016-00223
Patent 7,590,752 B2

Before GLENN J. PERRY, TREVOR M. JEFFERSON, and STACEY G. WHITE,
Administrative Patent Judges.

WHITE, Administrative Patent Judge.

ORDER
Motion to Terminate
37 C.F.R. § 42.72

IPR2016-00223
Patent 7,590,752 B2

2

On January 26, 2016, the parties filed a joint motion to terminate the instant
proceeding under 35 U.S.C. § 317(a). Paper 6. Along with the motion, the parties
filed a copy of a document they described as the written settlement agreement (Ex.
1069), as well as a joint request to treat the settlement agreement as business
confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 7
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint request of
the petitioner and patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” The parties stated in their
motion that “[t]ermination with respect to Petitioner and Patent Owner Nonend is
appropriate in the instant proceeding because the dispute between the parties has
been resolved.” Paper 6, 1. The parties note that this proceeding is in the early
stages. Furthermore, a trial has not been instituted in this proceeding.
The parties are reminded that the Board is not a party to the settlement, and
may independently identify 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. 14, 2012). This proceedings is still in the
preliminary stages, as the Board has not instituted a trial. The Board is persuaded
that, under these circumstances, it is appropriate to terminate this proceeding
without rendering a final written decision. 37 C.F.R. § 42.72.

Accordingly, it is:
ORDERED that the joint motion to terminate this proceeding is GRANTED
and this proceeding is hereby terminated;
IPR2016-00223
Patent 7,590,752 B2

3

FURTHER ORDERED that the parties’ joint request that the settlement
agreement (Ex. 1069) be treated as business confidential information, kept separate
from the file of the involved patent, and made available only to Federal
Government agencies on written request, or to any person on a showing of good
cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
GRANTED.

IPR2016-00223
Patent 7,590,752 B2

4

PETITIONER:

Bing Ai
Kevin Patariu
Christopher Kelley
Vinay Sathe
Phillip Morin
Perkins Coie LLP
Ai-ptab@perkinscoie.com
Kpatariu@perkinscoie.com
Ckelley@perkinscoie.com
Vsathe@perkinscoie.com
Pmorin@perkinscoie.com

PATENT OWNER:

Matthew Antonelli
ANTONELLI, HARRINGTON & THOMPSON LLP
matt@ahtlawfirm.com