Oracle Corporationv.Clouding IP, LLC

Patent Trial and Appeal Board

Jul 23, 2013

08820573 (P.T.A.B. Jul. 23, 2013)

Trial@uspto.gov Paper 10
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 IPR2013-00304 (JL)
Patent 5,944,839

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
proceeding with respect to the petitioner (“Oracle”). (Paper 7.) With the joint
motion, the parties filed a copy of their written settlement agreement covering
Patent 5,944,839 involved in this proceeding. (Paper 9.) The parties also filed, on
Case IPR2013-00304
Patent 5,944,839

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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 8.)
In a telephone conference call conducted on July 11, 2013, counsel for the
parties represented that they have reached an agreement resolving the dispute in
the instant proceeding and will also move to dismiss related district court litigation
between the parties and involving Patent 5,944,839. The Board asked the parties
to indicate in their joint motion to terminate this 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
5,944,839 but not Oracle. The defendants in such other related litigation have not
filed a petition for inter partes review of Patent 5,944,839.
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). Oracle’s petition was filed on May 23, 2013,
and Clouding has not yet filed its Preliminary Response. The Board has not yet
determined whether an inter partes review should be instituted.
Oracle represents that it will no longer participate, even if the Board
institutes an inter partes review and commences a trial. That means even if an
inter partes review is instituted, 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. Also, because of
non-participation of Oracle, Clouding may not have an opportunity to cross
examine Oracle’s witness whose testimony is relied on by Oracle’s petition.
Case IPR2013-00304
Patent 5,944,839

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As no trial has been instituted based on Oracle’s petition, this 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 IPR2013-00304 is
GRANTED, and this proceeding 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.

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 IPR2013-00304
Patent 5,944,839

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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