Google Inc.v.TLI Communications LLC

Patent Trial and Appeal Board

Dec 17, 2015

08877488 (P.T.A.B. Dec. 17, 2015)

Trials@uspto.gov Paper 36
571-272-7822 Entered: December 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

TLI COMMUNICATIONS LLC,
Patent Owner.
____________

Case IPR2015-00283
Patent 6,038,295
____________

Before TRENTON A. WARD, BART A. GERSTENBLITH, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

ORDER
Termination of the Proceeding
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
IPR2015-00283
Patent 6,038,295

2
On December 11, 2015, with Board authorization, the parties filed a
joint motion to terminate this proceeding (Paper 34), along with what they
indicated is a true copy of their written settlement agreement (Ex. 2010).
The parties indicated in their joint motion that they have reached an
agreement to terminate this proceeding relating to U.S. Patent No. 6,038,295
(“the ’295 patent”). Paper 34, 3. On the same day, the parties also filed a
joint motion requesting that the settlement agreement be treated as business
confidential information and kept separate from the file of the ’295 patent.
Paper 35.
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.” We
instituted a trial in this proceeding as to claims 17–24 of the ’295 patent
(Paper 21) on June 1, 2015, but we have not yet decided the merits of the
proceeding.
Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
understanding between the parties made in connection with, or in
contemplation of, the termination of a proceeding shall be in writing and true
copy shall be filed with the Board before the termination of the trial.” The
parties have filed what they indicated is a true copy of their written
settlement agreement, which they represented constitutes the entire
agreement between the parties with respect to this inter partes review
(Ex. 2010, §§ IV, XII). In view of the foregoing reasons, we determine that
it is appropriate to terminate this proceeding without rendering a final
IPR2015-00283
Patent 6,038,295

3
written decision as to the patentability of claims 17–24 of the ’295 patent.
See 37 C.F.R. §§ 42.72, 42.74.
As requested by the parties, the settlement agreement will be treated
as business confidential information and kept separate from the file of the
’295 patent. 37 C.F.R. § 42.74(c).

Accordingly, it is
ORDERED that the joint motion to terminate the proceeding
(Paper 34) is granted;
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Ex. 2010) be treated as business confidential
information (Paper 35) is granted; and
FURTHER ORDERED that this proceeding is hereby terminated.

PETITIONER:
David M. Krinsky
Aaron Maurer
WILLIAMS & CONNOLLY LLP
dkrinsky@wc.com
amaurer@wc.com

PATENT OWNER:

Tarek N. Fahmi
Holly Atkinson
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
holly.atkinson@ascendalaw.com