COMSCORE, INC.v.MOAT, INC.

Patent Trial and Appeal Board

May 30, 2014

10668476 (P.T.A.B. May. 30, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: May 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMSCORE, INC.
Petitioner

v.

MOAT, INC.
Patent Owner

Case CBM2014-00071
Patent 6,963,826

Before THOMAS L. GIANNETTI, TRENTON A. WARD, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

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

Case CBM2014-00071
Patent 6,963,826

2
On May 21, 2014, the parties filed a joint motion to terminate the trial
proceedings under 35 U.S.C. § 327(a) and to treat the Settlement Agreement
attached thereto as Exhibit 1016 as business confidential information under
35 U.S.C. § 327(b) and 37 CFR § 42.74(c). Paper 9. Along with the
motion, the parties filed a copy of a document they described as the written
settlement agreement. Exhibit 1118.
Under 35 U.S.C. § 327(a), “a post-grant review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the 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 they have settled their dispute and have
reached agreement to terminate this covered business method review and the
co-pending litigation. Paper 9, 2.
Furthermore, the joint motion states that the related litigation has been
dismissed by agreement of the parties, and that there is no other litigation
involving the ’826 patent pending. Id. at 3.
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 proceeding is still in the preliminary stages. The
Board is persuaded that, under these circumstances, it is appropriate to
Case CBM2014-00071
Patent 6,963,826

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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; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Exhibit 1118) 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.
§ 327(b) and 37 C.F.R. § 42.74(c), is GRANTED.
Case CBM2014-00071
Patent 6,963,826

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For PETITIONER:

W. Karl Renner
Kevin E. Greene
FISH & RICHARDSON P.C.
axf@fr.com
greene@fr.com

For PATENT OWNER:

Louis J. DelJuidice
Phoenix S. Pak
TROUTMAN SANDERS LLP
louis.deljuidice@troutmansanders.com
phoenix.pak@troutmansanders.com