Amazon.com, Inc.v.C4CAST.COM, Inc.

Patent Trial and Appeal Board

Apr 2, 2015

12029423 (P.T.A.B. Apr. 2, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: April 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMAZON.COM, INC.,
Petitioner,

v.

C4CAST.COM, INC.,
Patent Owner.
____________

Case CBM2015-00065
Patent 7,958,204 B1
____________

Before JAMESON LEE, JAMES P. CALVE, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

CBM2015-00065
Patent 7,958,204 B1
2
On April 1, 2015, Petitioner Amazon.com, Inc. (“Amazon”) and
Patent Owner c4cast.com, Inc. (“c4cast”) (collectively, “the parties”) filed a
Revised Joint Motion (Paper 9) to terminate this proceeding pursuant to
37 C.F.R. § 42.72.
In the Revised Joint Motion, the parties represent that termination of
this proceeding is appropriate because the parties have agreed to end their
pending disputes concerning the involved patent, U.S. Patent No. 7,958,204
B1. Paper 9, 1. According to the Revised Joint Motion, the parties jointly
filed a Stipulated Motion for Dismissal (Ex. AMAZ-1016) on January 23,
2015, seeking to dismiss all claims in the related district court action,
c4cast.com, Inc. v. Amazon.com, Inc., No. 2:14-cv-00484 (E.D. Tex.)
(consolidated under c4cast.com, Inc. v. Barnes & Noble, Inc., et al., No.
2:14-cv-489-JRG-RSP (E.D. Tex.)), and that, as a result of that Stipulated
Motion for Dismissal, the Court in that action entered an Order (Ex. AMAZ-
1017) on January 31, 2015, dismissing all claims asserted by c4cast against
Amazon with prejudice and dismissing all counterclaims asserted by
Amazon against c4cast without prejudice. Paper 9, 1–2. The parties
additionally identified in the Revised Joint Motion twenty-six other district
court proceedings concerning the ’204 patent and indicated that all such
proceedings have been dismissed. Id. at 3–5. The parties represent that
there are currently no other district court proceedings or Board proceedings
involving the ’204 patent. Id. at 5.
Under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding
between the parties made in connection with, or in contemplation of, the
termination of a proceeding shall be in writing and a true copy shall be filed
with the Board before termination of the trial.” In the Revised Joint Motion,
CBM2015-00065
Patent 7,958,204 B1
3
the parties represent that they agree to move jointly to terminate the covered
business method patent review of the ’204 patent and affirm that their
agreement does not include any other terms, condition, or obligations and/or
responsibilities of either party that are not already revealed in the term in the
Joint Motion. Paper 9, 1–2.
This proceeding is at an early stage. Amazon has not yet filed a
Preliminary Response, and we have not instituted a trial. In view of the
early stage of the proceeding and the dismissal with prejudice of c4cast’s
claims against Amazon in the related district court action, the Board
determines that it is appropriate to terminate and enter judgment in this
proceeding without rendering a final written decision as to the patentability
of claims 1–26 of the ’204 patent.
Accordingly, it is
ORDERED that the parties’ Revised Joint Motion to terminate this
proceeding is granted; and
FURTHER ORDERED that this proceeding is hereby terminated.

FOR PETITIONER:

Andrew S. Ehmke
Scott T. Jarratt
Haynes and Boone, LLP
andy.ehmke.ipr@haynesboone.com
scott.jarratt.ipr@haynesboone.com

FOR PATENT OWNER:

Joseph Swan
jswan@patent-techlaw.com