Home Depot U.S.A., Inc.v.Lakshmi Arunachalam

Patent Trial and Appeal Board

Sep 11, 2014

12628066 (P.T.A.B. Sep. 11, 2014)

Trial@uspto.gov
571-272-7822
Paper No. 17
Date Entered: September 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

STAPLES, INC., HOME DEPOT, U.S.A., and
EDIBLE ARRANGEMENTS INTERNATIONAL, LLC,
Petitioner,

v.

PI-NET INTERNATIONAL, INC.,
Patent Owner.
____________

Case CBM2014-00097
Patent 8,346,894 B2
____________

Before KARL D. EASTHOM, WILLIAM V. SAINDON,
and BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

JUDGMENT
TERMINATION OF THE PROCEEDING

37 C.F.R. § 42.73

Case CBM2014-00097
Patent 8,346,894 B2

2

Staples, Inc., Home Depot, U.S.A., and Edible Arrangements International,
LLC (“Petitioner Entities”) and Pi-Net International (“Patent Owner”) have
requested that this trial proceeding be terminated pursuant to a settlement. On
August 21, 2014, the Board authorized the parties to file a Joint Motion To
Terminate the proceeding and a joint request to file the respective settlement
agreements as business confidential under 37 C.F.R. 42.74(c). Paper 14. On
September 5, 2014, the parties filed a Joint Motion to Terminate, Paper 15, and a
Joint Request To Maintain Confidentiality And To Keep Separate Pursuant To
35 U.S.C. § 327(b) and 37 C.F.R. § 42.74, Paper 16 (“Joint Request”). With their
Motion To Terminate and Joint Request, the parties also filed a copy of a written
settlement agreement with each of the Petitioner Entities, Exs. 1042, 1043, and
1044, and a stipulation of dismissal of litigation filed with the district court1
between Patent Owner and each of the Petitioner Entities, Exs. 1039, 1040, 1041.
This matter was in the preliminary stages at the time the parties moved to
terminate and no decision to institute a trial had been entered. The parties have
indicated that they do not contemplate litigation concerning the patent that is the
subject of this proceeding in the foreseeable future. Joint Motion to Terminate 2.
Under these circumstances, the Board determines that it is appropriate to enter
judgment2 and terminate the trial without rendering a final written decision.
37 C.F.R. § 42.72.
It is, therefore,

1On September 10, 2014, the parties filed a copy of the Order of Dismissal of the
action against each of the Petitioner Entities entered by the district court. Exs.
1045, 1046, and 1047.
2 A judgment means a final written decision by the Board, or a termination of a
proceeding. 37 C.F.R. § 42.2.
Case CBM2014-00097
Patent 8,346,894 B2

3

ORDERED that the joint motion to terminate the proceeding is GRANTED
and the proceeding is hereby terminated;
FURTHER ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information, which shall be kept
separate from the file of the involved patents under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

PETITIONER: (via electronic transmission)

James H. Heintz
Ryan Cobb
DLA Piper LLP (US)
jim.heintz@dlapiper.com
ryan.cobb@dlapiper.com

PATENT OWNER: (via electronic transmission)

Bryan Boyle
Keith Kline
CARR & FERRELL LLP
bboyle@carrferrell.com
kkline@carrferrell.com