`Enter: May 12, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GSN GAMES, INC.,
`Petitioner,
`
`v.
`
`BALLY GAMING, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00155
`Patent 5,816,918
`____________
`
`
`Before MICHAEL P. TIERNEY, PATRICK R. SCANLON, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 327 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`CBM2015-00155
`Patent 5,816,918
`
`
`Pursuant to authorization by the Board, GSN Games, Inc.
`(“Petitioner”) and Bally Gaming, Inc. (“Patent Owner”) filed a Joint Motion
`to Terminate Proceeding Pursuant to 35 U.S.C. § 327(a) (Paper 14, “Mot.”)
`and a Joint Motion to File Settlement Agreement as Business Confidential
`Information Under 35 U.S.C. § 327 (Paper 15).
`Under 35 U.S.C. § 327(a), a post-grant review proceeding 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. The present
`proceeding is in an early stage. A Decision to Institute was entered January
`21, 2016 (Paper 8). Patent Owner has not yet filed its Patent Owner
`Response, and there has been no discovery. Mot. 1. The merits have not
`been decided, and this proceeding is eligible for termination. See Mot. 2.
`Under 35 U.S.C. § 327(b), any agreement or understanding between
`the patent owner and a petitioner, including any collateral agreements
`referred to in such agreement or understanding, made in connection with, or
`in contemplation of, the termination of the proceeding shall be in writing,
`and a true copy of such agreement or understanding shall be filed in the
`Office. Patent Owner and Petitioner state that they “have settled their
`dispute” and “entered into a Settlement Agreement resolving all issues
`relating to their dispute.” Mot. 2. In support of their joint motion, the
`parties filed a true and correct copy of their written agreement. Id.
`Upon consideration of the facts in the case before us, we grant the
`joint motion and terminate this proceeding as to both Petitioner and Patent
`Owner without rendering a final written decision. 37 C.F.R. § 42.72. We
`also grant the joint motion to maintain the filed settlement agreement (Paper
`
`
`
`2
`
`
`
`CBM2015-00155
`Patent 5,816,918
`
`15, Ex. A) as business confidential information in accordance with 35
`U.S.C. § 327 and 37 C.F.R. § 42.74(c).
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate Proceeding Pursuant to
`
`35 U.S.C. § 327(a) is granted and, accordingly, this proceeding is hereby
`terminated; and
`
`FURTHER ORDERED that the parties’ Joint Motion to File
`Settlement Agreement as Business Confidential Information Under 35
`U.S.C. § 327 to treat the settlement agreement (Paper 15, Ex. A) submitted
`in support of the joint motion to terminate as business confidential
`information, to be kept separate from the file of U.S. Patent No. 5,816,918,
`and made available only under the provisions of 35 U.S.C. § 327(b) and 37
`C.F.R. § 42.74(c), is granted.
`
`For PETITIONER:
`Brenton R. Babcock
`Ted M. Cannon
`Michelle E. Armond
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2BRB@knobbe.com
`2tmc@knobbe.com
`2mea@knobbe.com
`
`For PATENT OWNER:
`Barry E. Bretschneider
`BAKER & HOSTETLER LLP
`bbretschneider@bakerlaw.com
`
`
`
`3