Mirror Imaging LLC

Patent Trials and Appeals Board

Jul 21, 2020

CBM2017-00065 (P.T.A.B. Jul. 21, 2020)

Trials@uspto.gov Paper 72
Tel: 571-272-7822 Entered: July 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FIDELITY INFORMATION SERVICES, LLC,
Petitioner,

v.

MIRROR IMAGING, LLC,
Patent Owner.
____________

CBM2017-00064 (Patent 6,963,866 B2);
CBM2017-00065 (Patent 7,552,118 B2);
CBM2017-00066 (Patent 7,836,067 B2);
CBM2017-00067 (Patent 9,141,612 B2)
____________

Per Curiam.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 327; 37 C.F.R. § 42.74

CBM2017-00064 (Patent 6,963,866 B2);
CBM2017-00065 (Patent 7,552,118 B2);
CBM2017-00066 (Patent 7,836,067 B2);
CBM2017-00067 (Patent 9,141,612 B2)

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I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(“Parties”) filed Joint Motions to Terminate these proceedings due to
settlement. CBM2017-00064, Paper 67; CBM2017-00065, Paper 69;
CBM2017-00066, Paper 70; CBM2017-00067, Paper 70. In support of
these motions, the Parties filed a copy of a confidential settlement agreement
(CBM2017-00064, Ex. 1062; CBM2017-00065, Ex. 1062; CBM2017-
00066, Ex. 1062; CBM2017-00067, Ex. 1062 (“Settlement Agreement”)), as
well as joint requests to file the settlement agreement as business
confidential information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R.
§ 42.74(c) (CBM2017-00064, Paper 68; CBM2017-00065, Paper 70;
CBM2017-00066, Paper 71; CBM2017-00067, Paper 71). For simplicity,
we refer below only to the filings in CBM2017-00064, which are
representative of the filings in all of the proceedings.
II. DISCUSSION
Under 35 U.S.C. § 327(a), a covered business method review1 “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.” Section 35
U.S.C. § 327(a) also provides that if no petitioner remains in the covered

1 See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
329–31 (2011) (providing that the transitional program for covered business
method patents will be regarded as a post-grant review under Chapter 32 of
Title 35 of the United States Code, and will employ the standards and
procedures of a post-grant review, subject to certain exceptions not relevant
here).
CBM2017-00064 (Patent 6,963,866 B2);
CBM2017-00065 (Patent 7,552,118 B2);
CBM2017-00066 (Patent 7,836,067 B2);
CBM2017-00067 (Patent 9,141,612 B2)

3

business method review, the Office may terminate the review. Section
327(b) requires that any agreement between the parties, including collateral
agreements, made in connection with the termination of a covered business
method review “shall be in writing and a true copy of such agreement or
understanding shall be filed in the Office before the termination of the post-
grant review as between the parties.”
The Parties represent that they have reached an agreement to seek
termination of these covered business method review proceedings jointly.
E.g., CBM2017-00064 Joint Motion 1. “The parties jointly certify that,
aside from the Settlement Agreement, there are no other agreements or
understandings, oral or written, between the parties, including any collateral
agreements or understandings, made in connection with, or in contemplation
of, the termination of the present proceeding,” and the filed copy of the
Settlement Agreement is a true and correct copy. E.g., id. The Parties
further represent that the Settlement Agreement resolves all currently
pending Patent Office and District Court proceedings between the Parties
involving the patents at issue. E.g., id. at 2–3.
We instituted trials on the above-identified proceedings. Although we
decided the merits of the proceedings and entered final written decisions, the
Federal Circuit vacated those final written decisions. Mirror Imaging, LLC
v. Fidelity Information Services, LLC, Nos. 19-2026, -2027, -2028, -2029
(Fed. Cir. Jan. 15, 2020) (order granting motion to vacate and remand).
Notwithstanding that the proceedings have moved beyond the preliminary
stages, the Parties have shown adequately that the termination of the
proceedings is appropriate. Under these circumstances, we determine that
CBM2017-00064 (Patent 6,963,866 B2);
CBM2017-00065 (Patent 7,552,118 B2);
CBM2017-00066 (Patent 7,836,067 B2);
CBM2017-00067 (Patent 9,141,612 B2)

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good cause exists to terminate the proceedings. We further determine that
the Settlement Agreement complies with the requirements for written
agreements regarding termination set forth in 35 U.S.C. § 327(b).
The Parties also filed Joint Requests that the Settlement Agreement be
treated as business confidential information and be kept separate from the
file of the respective patents involved in this covered business method
proceeding. E.g., CBM2017-00064 Joint Request. After reviewing the
Settlement Agreement between Petitioner and Patent Owner, we find that the
Settlement Agreement contains confidential business information regarding
the terms of settlement. We determine that good cause exists to treat the
Settlement Agreement between Petitioner and Patent Owner as business
confidential information pursuant to 35 U.S.C. § 327(b) and 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 328(a).
III. ORDER
Accordingly, for the reasons discussed above, it is
ORDERED that, for each proceeding, the Joint Motion to Terminate
is granted, and CBM2017-00064, CBM2017-00065, CBM2017-00066, and
CBM2017-00067 are terminated pursuant to 35 U.S.C. § 327(a) and
37 C.F.R. § 42.72; and
FURTHER ORDERED that, for each proceeding, the Joint Request to
Treat the Settlement Agreement as Business Confidential Information is
granted, and the Settlement Agreement shall be kept separate from the files
of U.S. Patent Nos. 6,963,866 B2; 7,552,118 B2; 7,836,067 B2 and
CBM2017-00064 (Patent 6,963,866 B2);
CBM2017-00065 (Patent 7,552,118 B2);
CBM2017-00066 (Patent 7,836,067 B2);
CBM2017-00067 (Patent 9,141,612 B2)

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9,141,612 B2, and made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, pursuant to
35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).

For PETITIONER:
Erika Harmon Arner
Kevin D. Rodkey
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
erika.arner@finnegan.com
kevin.rodkey@finnegan.com

For PATENT OWNER:

Derek Clements
BOLD INTELLECTUAL PROPERTY PLLC
derek@boldip.com

Isaac Rabicoff
Kenneth A. Matuszewski
RABICOFF LAW LLC
isaac@rabilaw.com
kenneth@rabilaw.com