505 Games Interactive, Inc. and 505 Games (U.S.), Inc.v.Babbage Holdings, LLC

Patent Trial and Appeal Board

Mar 24, 2015

07974044 (P.T.A.B. Mar. 24, 2015)

Trials@uspto.gov Paper No. 44
571-272-7822 Entered: April 20, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

505 GAMES, INC., ACTIVISION BLIZZARD, INC., BLIZZARD
ENTERTAINMENT, INC., CAPCOM U.S.A. INC., THE WALT DISNEY
CO., DISNEY INTERACTIVE STUDIOS, INC., LUCASARTS,
ELECTRONIC ARTS INC., BANDAI NAMCO GAMES AMERICA,
INC., BANDAI NAMCO HOLDINGS USA INC., RIOT GAMES, INC.,
SONY COMPUTER ENTERTAINMENT AMERICA LLC, SQUARE
ENIX, INC., SQUARE ENIX OF AMERICA HOLDINGS, INC., TAKE-
TWO INTERACTIVE SOFTWARE, INC., ROCKSTAR GAMES, INC.,
2KSPORTS, INC., 2K GAMES, INC., UBISOFT, INC.,
NINTENDO OF AMERICA, INC., and NINTENDO CO., LTD.,
Petitioner,

v.

BABBAGE HOLDINGS, LLC,
Patent Owner.

Case IPR2014-009541
Patent 5,561,811
____________

Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

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

1 Case IPR2015-00568 has been joined with this proceeding.
IPR2014-00954
Patent 5,561,811

2
On March 24, 2015, the Board terminated the participation of 505
Games, Inc., Activision Blizzard, Inc., Blizzard Entertainment, Inc., Capcom
U.S.A. Inc., The Walt Disney Co., Disney Interactive Studios, Inc.,
LucasArts, Electronic Arts, Inc., Bandai Namco Games America, Inc.,
Bandai Namco Holdings USA Inc., Riot Games, Inc., Sony Computer
Entertainment America LLC, Square Enix, Inc., Square Enix of America
Holdings, Inc., Take-Two Interactive Software, Inc., Rockstar Games, Inc.,
2KSports, Inc., 2K Games, Inc., and Ubisoft, Inc. in this proceeding. Paper
41.
On April 13, 2015, the Board authorized the sole remaining entities—
Nintendo of America, Inc., and Nintendo Co., Ltd. (collectively,
“Petitioner”) and Babbage Holdings, LLC (“Patent Owner”)—to file a joint
motion to terminate. On April 14, 2015, Petitioner and Patent Owner filed a
joint motion to terminate the trial proceedings and to treat the submitted
settlement agreement (Ex. 2013) as business confidential information 35
U.S.C. § 317. Paper 43.
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” In their
joint motion, the parties request termination of the instant proceeding
because they have settled their respective disputes and have reached an
agreement to terminate this inter partes review, and because the Office has
not yet decided the merits of the proceeding. See, e.g., Paper 43, 2–3.
The parties also indicate that all but one district court actions in which
the ’811 patent has been asserted have been settled and, in those cases, joint
IPR2014-00954
Patent 5,561,811

3
stipulations for dismissal have been granted. Id. at 3–5. The parties indicate
that the sole district court action that remains pending involves Konami
Digital Entertainment, Inc. Id. at 4. We note that Konami Digital
Entertainment, Inc. is not party to this proceeding.
The parties are reminded that the Board is not a party to the settlement
and that, even if the parties agree to settle any issue in a proceeding, the
Board may independently determine 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). We
have not yet decided the merits of this proceeding. For example, the oral
argument has not been held. The Board is persuaded that, under these
circumstances, it is appropriate to terminate this proceeding as to both
Petitioner and Patent Owner without rendering a final written decision.
37 C.F.R. § 42.72.

ORDER
Accordingly, it is:
ORDERED that the the joint motion to terminate this proceeding is
GRANTED and this proceeding is hereby terminated as to both Petitioner
and Patent Owner; and
FURTHER ORDERED that the joint request that the settlement
agreement (Ex. 2013) 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
IPR2014-00954
Patent 5,561,811

4
showing of good cause, under the provisions of 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), is GRANTED.

PETITIONER:

Eric A. Buresh
Paul R. Hart
ERISE IP, P.A.
eric.buresh@eriseip.com
paul.hart@eriseip.com

Patrick D. McPherson
Phillip D. Mancini
DUANE MORRIS LLP
PDMcPherson@duanemorris.com
PDMancini@duanemorris.com

PATENT OWNER:

David H. Judson
LAW OFFICE OF DAVID H. JUDSON
mail@davidjudson.com

Anthony M. Garza
CHARHON CALLAHAN ROBSON & GARZA, PLLC
agarza@ccrglaw.com