WMS Gaming Inc.v.MGT Gaming, Inc.

Patent Trial and Appeal Board

Jul 15, 2014

09982437 (P.T.A.B. Jul. 15, 2014)

Trials@uspto.gov Paper 19
571-272-7822 Date: July 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WMS GAMING INC.,
Petitioner,

v.

MGT GAMING, INC.,
Patent Owner.
____________

Case IPR2014-00120
Patent No. 7,892,088 B2

____________

Before RICHARD E. RICE, CHRISTOPHER L. CRUMBLEY, and
CARL M. DEFRANCO, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

On July 8, 2014, pursuant to Board authorization, Petitioner WMS Gaming
Inc. and Patent Owner MGT Gaming, Inc., filed a joint motion to terminate this
inter partes review. Paper 16. With the joint motion, the parties filed a copy of
Case IPR2014-00120
Patent No. 7,892,088 B2

2

their written settlement agreement covering various matters involving Patent No.
7,892,088 B2, the subject of this inter partes review. Ex. 1009. The parties
concurrently filed a joint request to have the settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 17.
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.” In this proceeding, the
Board instituted trial on April 30, 2014 (Paper 10), but has not yet reached a
decision on the merits with respect to the patentability of any involved claim.
Accordingly, the requirement for terminating review with respect to WMS, as
petitioner, is met.
Also 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).” WMS is the sole petitioner. The Board, therefore, has
discretion to terminate this review with respect to the patent owner MGT. In their
joint motion, the parties contend that termination is appropriate because the parties
jointly request termination and the Board has not yet decided the merits of the
proceeding. Paper 16, 2. The joint motion also indicates that in co-pending district
court litigations between MGT and WMS asserting infringement of Patent No.
7,892,088 B2, MGT sought and obtained dismissals with prejudice of all its
pending claims. Id. at 4. The parties identify no pending related inter partes
reviews. Id. at 5.
Case IPR2014-00120
Patent No. 7,892,088 B2

3

Based on the record before us, we determine that it is appropriate to
terminate this inter partes review both as to petitioner WMS and patent owner
MGT without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R.
§ 42.72.

In light of the foregoing, it is
ORDERED that the parties’ joint request to have their settlement agreement
(Exhibit 1009) treated as business confidential information, to be kept separate
from the patent file, is granted;
FURTHER ORDERED that the joint motion to terminate this proceeding
with respect to WMS is granted;
FURTHER ORDERED that the Board exercises its discretion to grant
termination with respect to MGT; and
FURTHER ORDERED that this inter partes review is hereby terminated.

Case IPR2014-00120
Patent No. 7,892,088 B2

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FOR PETITIONER:

Timothy C. Meece
Michael J. Harris
BANNER & WITCOFF, LTD.
tmeece@bannerwitcoff.com
mharris@bannerwitcoff.com

FOR PATENT OWNER:

Joseph S. Presta
Joseph A. Rhoa
NIXON & VANDERHYE P.C.
jsp@nixonvan.com
jar@nixonvan.com