STARWOOD HOTELS AND RESORTS WORLDWIDE, INC.v.LONE STAR WIFI, LLC

Patent Trial and Appeal Board

Dec 20, 2013

10800472 (P.T.A.B. Dec. 20, 2013)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: December 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

STARWOOD HOTELS AND RESORTS WORLDWIDE, INC.
Petitioner

v.

LONE STAR WIFI, LLC
Patent Owner
____________

Case IPR2014-00102
Patent 7,490,348 B1

Before JUSTIN T. ARBES, BRYAN F. MOORE, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73
On December 12, 2013, the Board authorized the parties to file a joint
motion to rescind the judgment previously entered in the instant proceeding
and terminate the proceeding on the basis of the parties’ settlement. Paper
11. The parties filed their joint motion on December 17, 2013. Paper 12;
Case IPR2014-00102
Patent 7,490,348 B1

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see 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of
their written settlement agreement (Exhibit 1017) and a request (Paper 13) to
treat the settlement agreement as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Before being terminated by virtue of the earlier judgment, this
proceeding was still in the preliminary stages. Patent Owner had not yet
filed a preliminary response and the Board had not yet determined whether
to institute an inter partes review. Petitioner also filed a “Notice of
Non-Participation” stating that it no longer intended to participate in the
proceeding. Paper 5. The parties further represent that the related district
court litigation involving the challenged patent was terminated based on the
parties’ settlement agreement. Paper 12 at 1. The parties identify no other
related matters. Under the circumstances, the Board determines that it is
appropriate to terminate the proceeding without rendering a final written
decision. See 37 C.F.R. § 42.72.
In consideration of the foregoing, it is hereby:
ORDERED that the judgment entered on December 4, 2013 in this
proceeding is withdrawn;
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Exhibit 1017) be treated as business confidential
information, kept separate from the file of Patent 7,490,348 B1, and made
available only to Federal Government agencies on written request, or to any
person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c), is granted; and
FURTHER ORDERED that the joint motion to terminate the
proceeding is granted and this proceeding is hereby terminated.
Case IPR2014-00102
Patent 7,490,348 B1

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PETITIONER:

Scott A. McKeown
Greg Gardella
OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
CPDocketMcKeown@oblon.com
CPDocketGardella@oblon.com

PATENT OWNER:

Abraham Hershkovitz
Eugene Rzucidlo
HERSHKOVITZ & ASSOCIATES, PLLC
ahershkovitz@hershkovitz.net
GRzucidlo@Hershkovitz.net