`
`571-272-7822
`Date Entered: November 1, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOUTHSIDE BANCSHARES, INC.,
`SOUTHSIDE BANK, TEXAS CAPITAL BANK, N.A.,
`TEXAS CAPITAL BANCSHARES, INC., and
`ZB, N.A. DBA AMEGY BANK,
`Petitioner,
`
`v.
`
`ST. ISIDORE RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case CBM2016-00027
`Patent 8,589,271 B2
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, THOMAS L. GIANNETTI, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Trial
`35 U.S.C. § 327 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`CBM2016-00027
`Patent 8,589,271 B2
`
`
`
`I. DISCUSSION
`On October 28, 2016, the parties filed a Joint Motion to Terminate this
`proceeding (Paper 30), a true copy of the settlement agreement between Petitioner
`entities, Southside Bancshares, Inc., Southside Bank, Texas Capital Bank, N.A.,
`and Texas Capital Bancshares, Inc., and St. Isidore Research, LLC (“Patent
`Owner”) (Ex. 2008), and a request to treat the settlement agreements as business
`confidential information under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) (Paper
`31). On October 31, 2016, the parties filed a true copy of the settlement agreement
`between Petitioner entity, ZB, N.A. dba Amegy Bank, and Patent Owner.
`Ex. 2009.
`The trial is still in its preliminary stages. On August 1, 2016, we entered a
`decision instituting an inter partes review only as to claims 1–6, 8–10, 13–24, 26–
`28, and 31–36 of U.S. Patent No. 8,589,271 B2 (Ex. 1003, “the ’271 patent”) on
`the basis that these claims are more likely than not directed to patent-ineligible
`subject matter under 35 U.S.C. § 101. Paper 28. Although we instituted a trial,
`Patent Owner has not filed a response to the Petition, nor has Petitioner filed a
`reply.
`In the Joint Motion to Terminate this proceeding, the parties indicate that
`they have settled all their disputes regarding the ’271 patent. Paper 30, 3–4. The
`parties represent that the settlement encompasses the co-pending district court
`cases where the ’271 patent has been asserted against the Petitioner entities, as well
`as each of the following related Board proceedings: (1) Case CBM2016-00026;
`(2) Case IPR2016-01586; and (3) IPR2016-01587. Id. Consequently, we
`determine that it is appropriate to terminate the trial without rendering any further
`decisions. See 37 C.F.R. § 42.72.
`
`
`
`
`2
`
`
`
`CBM2016-00027
`Patent 8,589,271 B2
`
`
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request to treat the settlement agreements
`(Exs. 2008, 2009) as business confidential information under 35 U.S.C. § 327(b)
`and 37 C.F.R. § 42.74(c) is GRANTED; and
`FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
`GRANTED, and this proceeding is hereby terminated.
`
`
`
`3
`
`
`
`
`
`
`
`CBM2016-00027
`Patent 8,589,271 B2
`
`
`For PETITIONER:
`James M. Heintz
`Aaron Fountain
`DLA Piper LLP
`jim.heintz@dlapiper.com
`aaron.fountain@dlapiper.com
`St-IsidoreIPR-DLATeam@dlapiper.com
`
`Richard P. Stitt
`Polsinelli PC
`rstitt@polsinelli.com
`
`Anthony H. Son
`Andrews Kurth LLP
`AnthonySon@andrewskurth.com
`
`Kevin L. Daffer
`Matheson Keys Daffer & Kordzik
`kdaffer@mathesonkeys.com
`
`For PATENT OWNER:
`Neil A. Rubin
`Marc A. Fenster
`Benjamin T. Wang
`Amir Naini
`Jay Chung
`Russ August & Kabat
`nrubin@raklaw.com
`mfenster@raklaw.com
`bwang@raklaw.com
`anaini@raklaw.com
`jchung@raklaw.com
`
`
`
`
`
`4
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