Apple Inc.v.ContentGuard Holdings, Inc.

Patent Trial and Appeal Board

Mar 19, 2015

13210153 (P.T.A.B. Mar. 19, 2015)

Trial@uspto.gov Paper 14
571-272-7822 Entered: March 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE, INC.,
Petitioner,

v.

CONTENTGUARD HOLDINGS, INC.,
Patent Owner.

Case CBM2015-00042
Patent 8,583,556 B2

Before JAMESON LEE, JENNIFER S. BISK, and
BARBARA A. PARVIS, Administrative Patent Judges.

LEE, Administrative Patent Judge.

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

CBM2015-00042
Patent 8,583,556 B2

-2-
On March 9, 2014, the parties filed a Joint Motion to Terminate this covered
business method patent review with respect to both Petitioner (“Apple”) and Patent
Owner (“ContentGuard”). Paper 13. A written agreement to terminate this
proceeding was filed, on March 9, 2015, as Exhibit 1027.
Section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284, 329 (2011), provides that a covered business method patent review
“shall be regarded as, and shall employ the standards and procedures of, a post-
grant review” with certain exceptions. The exceptions do not include 35 U.S.C.
§ 327(a).
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.” Also under 35 U.S.C.
§ 327(a), “[i]f no petitioner remains in the post-grant review, the Office may
terminate the post-grant review or proceed to a final written decision under section
328(a).”
This proceeding is in its preliminary stage. Apple’s Petition was filed on
December 12, 2014. ContentGuard has not yet filed a Preliminary Response, the
due date of which has not passed. The Board has not yet instituted trial on any
challenged claim. Although no review has been instituted, Apple, the sole
Petitioner here, has indicated its desire to withdraw from the proceeding, which
would leave no entity acting as Petitioner.
CBM2015-00042
Patent 8,583,556 B2

-3-
We determine that, on these circumstances, it is appropriate to terminate the
proceeding both as to Apple and ContentGuard without rendering a Final Written
Decision See 35 U.S.C. § 327(a); 37 C.F.R. § 42.72.
It is
ORDERED that the Joint Motion to Terminate CBM2015-00042 is granted,
and this proceeding is hereby terminated as to all parties including Apple as
Petitioner and ContentGuard as Patent Owner.

For PETITIONER:
Jeffrey Kushan
Michael Franzinger
iprnotices@sidley.com

For PATENT OWNER:

Thomas Lebens
Timothy Malony
Robert Cote
tom@fitcheven.com
tpmalo@fitcheven.com
rcote@mckoolsmith.com