STARWOOD HOTELS AND RESORTS WORLDWIDE, INC.v.LONE STAR WIFI, LLCDownload PDFPatent Trial and Appeal BoardDec 20, 201312345565 (P.T.A.B. Dec. 20, 2013) Copy Citation Trials@uspto.gov Paper 16 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 IPR2014-00101 Patent 8,312,286 B2 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 IPR2014-00101 Patent 8,312,286 B2 2 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 1015) 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 7. 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of the foregoing, it is hereby: ORDERED that the judgment entered on December 4, 2013 in this proceeding is withdrawn; FURTHER ORDERED that the parties’ joint request that the settlement agreement (Exhibit 1015) be treated as business confidential information, kept separate from the file of Patent 8,312,286 B2, 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 IPR2014-00101 Patent 8,312,286 B2 3 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 Copy with citationCopy as parenthetical citation