Oracle Corporationv.Community United IP, LLC

Patent Trial and Appeal Board

Jul 25, 2013

08685706 (P.T.A.B. Jul. 25, 2013)

Trial@uspto.gov Paper 13
571-272-7822 Entered: July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ORACLE CORPORATION
Petitioner,

v.

COMMUNITY UNITED IP, LLC
Patent Owner.

Case CBM2013-00015 (JL)
Patent 5,862,223

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

JUDGMENT
Termination of Proceeding
37 C.F.R. § 42.73

On July 23, 2013, the parties filed a joint motion to terminate this
proceeding with respect to the petitioner (“Oracle”). (Paper 10.) With the joint
motion, the parties filed a copy of their written settlement agreement covering
Patent 5,862,223 involved in this proceeding. (Ex. 1046.) The parties also filed,
CBM2013-00015
Patent 5,862,223

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on July 23, 2013, a joint 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 12.)
In a telephone conference call conducted on July 15, 2013, counsel for the
parties represented that they have reached an agreement resolving the dispute in
the instant proceeding, and will also move to dismiss related district court litigation
between the parties involving Patent 5,862,223. The Board asked the parties to
indicate in their joint motion to terminate this proceeding whether there will be
codefendants remaining in such related litigation. The joint motion indicates none.
The joint motion also identifies two other related litigations involving Patent
5,862,223, and indicates that both cases were terminated with respect to all
defendants.
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. 48756, 48768 (Aug. 14, 2012). Oracle’s petition was filed on April 2, 2013,
and Community United has not yet filed its Preliminary Response. The Board has
not yet determined whether a covered business method patent review should be
instituted.
Oracle represents that it will no longer participate, even if the Board
institutes a covered business method patent review and commences a trial. That
means even if a covered business method patent review is instituted, Oracle will
not file a reply to any Patent Owner Response or an opposition to any Motion to
Amend Claims. Oracle also will not be conducting any cross examination of
Community United’s witnesses. Also, because of non-participation of Oracle,
CBM2013-00015
Patent 5,862,223

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Community United may not have an opportunity to cross examine Oracle’s
witnesses whose testimony are relied on by Oracle’s petition.
As no trial has been instituted based on Oracle’s petition, this proceeding is
in the preliminary proceeding stage.
1
Based on the facts of this case, it is
appropriate to enter judgment.
2

Accordingly, it is
ORDERED that the joint motion to terminate CBM2013-00015 is
GRANTED, and this proceeding is hereby terminated as to all parties including
petitioner Oracle and patent owner Community United; and
FURTHER ORDERED that the parties’s joint request to have their
settlement agreement treated as business confidential information under the
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.

1
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.
2
A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.
CBM2013-00015
Patent 5,862,223

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For PETITIONER
Amy R. Lemyre, Esq.
Joel R. Merkin, Esq
Kirkland & Ellis LLP
amy.lemyre@kirkland.com
joel.merkin@kirkland.com

For PATENT OWNER

Tarek N. Fahmi
Amy J. Embert
Fahmi, Sellers & Embert
tarek.fahmi@fseip.com
amy.embert@fseip.com