Google Inc.v.EMG Technology, LLC

Patent Trial and Appeal Board

Sep 5, 2013

11373324 (P.T.A.B. Sep. 5, 2013)

Trials@uspto.gov Paper 12
571-272-7822 Entered: September 5, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.
Petitioner

v.

EMG TECHNOLOGY, LLC
Patent Owner
____________

Case CBM2013-00036
U.S. Patent No. 7,441,196

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

ORDER
Termination of Proceeding
37 C.F.R. § 42.73

Case CBM2013-00036
U.S. Patent No. 7,441,196

2
On September 4, 2013, the parties filed a joint motion to terminate the
instant proceeding with respect to the petitioner (“Google”). Paper 9. With
the joint motion, the parties filed a copy of their written settlement
agreement made in connection with the termination of the instant
proceeding. Ex. 1027. The parties also filed a joint request to have their
settlement agreement treated as confidential business information under 35
U.S.C. § 327(b) and 37 C.F.R. § 42.74(c). Paper 10.
In the joint motion, the parties represent that they reached an
agreement resolving the dispute in the instant proceeding. Paper 9 at 2. The
parties further indicate that they jointly filed, on August 28, 2013, a
dismissal of all of their respective claims in the litigation associated with the
instant proceeding (Ex. 1028) and a form dismissal order for entry by the
district court (Ex. 1029). Paper 9 at 2-3. The dismissal stipulates that Patent
Owner (“EMG”) dismisses all claims against Google with prejudice.
Ex. 1028. The parties also note that the joint stipulation is self-actuating
under Rule 41 of the Local Rules for the U.S. District Court for the Eastern
District of Texas, and the parties expect that the dismissal order will be
executed promptly and entered. Paper 9 at 3.
Generally, 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. 48756, 48768 (Aug. 14, 2012). Google’s petition was
filed on July 15, 2013, and EMG has not yet filed its patent owner
preliminary response. The Board has not yet determined the merits of the
proceeding—specifically, whether a covered business method patent review
should be instituted.
Case CBM2013-00036
U.S. Patent No. 7,441,196

3
Even if the Board institutes a review and commences a trial, Google
will no longer participate. That means even if a review is instituted, Google
will not file a reply to any patent owner response or an opposition to any
motion to amend claims. Google also will not be conducting any cross
examination of EMG’s witnesses. In addition, because of non-participation
of Google, EMG may not have an opportunity to cross examine Google’s
witness whose testimony is relied upon by Google’s petition.
As no trial has been instituted based on Google’s petition, the instant
proceeding is in the preliminary proceeding stage.
1
Based on the facts of
this case, it is appropriate to enter judgment.
2

Accordingly, it is:
ORDERED that the joint motion to terminate CBM2103-00036 is
granted, and this proceeding is hereby terminated as to all parties including
Google and EMG; and
FURTHER ORDERED that the parties’ joint request to have their
settlement agreement treated as business confidential information under the
35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) also is granted.

1
A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether a trial will be instituted.
37 C.F.R. § 42.2.
2
A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
Case CBM2013-00036
U.S. Patent No. 7,441,196

4
PETITIONER:

Michael Messinger
Michelle Holoubek
Mikem-PTAB@skgf.com
Mholoubek-PTAB@skgf.com

PATENT OWNER:

Gregory Cordrey
gxc@jmbm.com