Oracle Corporationv.Clouding IP, LLC

Patent Trials and Appeals Board

Jul 22, 2013

08959919 - (D) (P.T.A.B. Jul. 22, 2013)

Trial@uspto.gov Paper 21
571-272-7822 Entered: July 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Oracle Corporation
Petitioner

v.

Clouding IP, LLC
Patent Owner

Case IPR2013-00100 (JL)
Patent 5,825,891

Before JAMESON LEE, JONI Y. CHANG, MICHAEL W. KIM, and
RAMA G. ELLURU, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

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

On July 19, 2013, the parties filed a joint motion to terminate this inter
partes review with respect to the petitioner (“Oracle”). (Paper 18.) With the joint
motion, the parties filed a copy of their written settlement agreement covering
Patent 5,825,891 involved in this inter partes review. (Paper 20.) The parties also
Case IPR2013-00100
Patent 5,825,891

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filed, on July 19, 2013, a joint request to have their settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). (Paper 19.)
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.” The requirement for
terminating review with respect to Oracle is met.
Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
review, the Office may terminate the review or proceed to a final written decision
under section 318(a).” Oracle is the sole petitioner in this review. The Board has
discretion to terminate this review with respect to the patent owner (“Clouding”).
Clouding has not yet filed its Patent Owner Response or any Motion to
Amend Claims. Oracle represents that it will no longer participate even if the
Board does not terminate this review. That means Oracle will not file a reply to
any Patent Owner Response or an opposition to any Motion to Amend Claims.
Oracle also will not be conducting any cross examination of Clouding’s witnesses.
In a telephone conference call conducted on July 11, 2013, counsel for the
parties represented that they will move to dismiss related district court litigation
between the parties and involving Patent 5,825,891. The Board asked the parties
to indicate in their joint motion to terminate proceeding whether there will be
codefendants remaining in such related litigation. The joint motion indicates none.
The joint motion identifies other related litigation involving Patent
5,825,891 but not Oracle. The defendants in such other related litigation have not
Case IPR2013-00100
Patent 5,825,891

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filed a petition for inter partes review of Patent 5,825,891. There is no pending
motion by any third party for joinder with this inter partes review.
The Board determines that in the circumstances of this case it is appropriate
to terminate review both as to petitioner Oracle and patent owner Clouding without
rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
It is
ORDERED that the joint motion to terminate IPR2013-00100 is
GRANTED, and this inter partes review is hereby terminated as to all parties
including petitioner Oracle and patent owner Clouding; and
FURTHER ORDERED that the parties’s joint request to have their
settlement agreement treated as business confidential information under the
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.

Case IPR2013-00100
Patent 5,825,891

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For PETITIONER
Greg Gardella
Scott A. McKeown
OBLON SPIVAK
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com

For PATENT OWNER

Tarek N. Fahmi
Amy J. Embert
Fahmi, Sellers & Embert
tarek.fahmi@fseip.com
amy.embert@fseip.com