`Tel: 571-272-7822
`
`Paper 11
`Entered: October 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACXIOM CORPORATION, TIAA-CREF LIFE INSURANCE
`COMPANY, and
`TEACHERS INSURANCE AND ANNUITY ASSOCIATION
`OF AMERICA,
`Petitioner,
`v.
`
`PHOENIX LICENSING, LLC,
`Patent Owner.
`____________
`
`Cases CBM2016-00055 (Patent 5,987,434)
`CBM2016-00057 (Patent 8,352,317 B2)
`CBM2016-00058 (Patent 8,738,435 B2)
`CBM2016-00059 (Patent 8,606,632 B2)
`CBM2016-00067 (Patent 7,890,366 B2)
`CBM2016-00069 (Patent 7,856,375 B2)
`CBM2016-00084 (Patent 6,999,938 B1)
`CBM2016-00085 (Patent 8,234,184 B2)1
`____________
`
`
`Before JUSTIN T. ARBES, FRANCES L. IPPOLITO, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceedings
`35 U.S.C. § 327 and 37 C.F.R. § 42.72
`
`
`1 This Decision addresses an issue that is identical in all eight cases.
`Therefore, we exercise discretion to issue one Decision to be filed in each of
`the eight cases. The parties, however, are not authorized to use this style
`heading in subsequent papers.
`
`
`
`1
`
`
`
`CBM2016-00055 (Patent 5,987,434)
`CBM2016-00057 (Patent 8,352,317 B2)
`CBM2016-00058 (Patent 8,738,435 B2)
`CBM2016-00059 (Patent 8,606,632 B2)
`CBM2016-00067 (Patent 7,890,366 B2)
`CBM2016-00069 (Patent 7,856,375 B1)
`CBM2016-00084 (Patent 6,999,938 B1)
`CBM2016-00085 (Patent 8,234,184 B2)
`
`
`On October 18, 2016, the parties filed a Joint Motion to Terminate the
`
`Proceeding in each of the eight identified proceedings. CBM2016-00055,
`
`Paper 9 (“Mot.”); CBM2016-00057, Paper 9, CBM2016-00058, Paper 9,
`
`CBM2016-00059, Paper 9; CBM2016-00067, Paper 9; CBM2016-00069,
`
`Paper 9; CBM2016-00084, Paper 9; CBM2016-00085, Paper 10. With the
`
`joint motion, the parties filed a true copy of their written settlement covering
`
`the challenged patent in each of the proceedings. The settlement has been
`
`filed as Exhibit 2001 in all eight proceedings. The parties have also filed a
`
`joint request to have their settlement agreement treated as confidential
`
`business information under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c)
`
`and, further, designated as “Parties and Board Only.” CBM2016-00055,
`
`Paper 10; CBM2016-00057, Paper 10, CBM2016-00058, Paper 10,
`
`CBM2016-00059, Paper 10; CBM2016-00067, Paper 10; CBM2016-00069,
`
`Paper 10; CBM2016-00084, Paper 10; CBM2016-00085, Paper 11.
`
`Each of these proceedings is still in the preliminary stages. Patent
`
`Owner has filed its Preliminary Responses (see, e.g., CBM2016-00055,
`
`Paper 8) in each proceeding; however, we have not yet determined whether
`
`to institute a covered business method patent review in any of the
`
`proceedings. Further, the parties represent that the settlement agreement is
`
`“the only agreement between Patent Owner and Petitioner regarding [these]
`
`proceeding[s],” and that “[i]n addition to settling this proceeding, the
`
`settlement agreement also settles related PTAB proceedings, CBM2016-
`
`
`
`CBM2016-00055 (Patent 5,987,434)
`CBM2016-00057 (Patent 8,352,317 B2)
`CBM2016-00058 (Patent 8,738,435 B2)
`CBM2016-00059 (Patent 8,606,632 B2)
`CBM2016-00067 (Patent 7,890,366 B2)
`CBM2016-00069 (Patent 7,856,375 B1)
`CBM2016-00084 (Patent 6,999,938 B1)
`CBM2016-00085 (Patent 8,234,184 B2)
`
`00057, 00058, 00059, 00067, 00069, 00084, and 00085 and related litigation
`
`Phoenix Licensing, L.L.C. et al. v. TIAA-CREF Life Insurance Co., No.
`
`2:15-cv-01379 (E.D. Tex. July 30, 2015).” Mot. 2, 4. Under the
`
`circumstances, the Board determines that it is appropriate to terminate the
`
`proceedings without rendering a final written decision. See 37 C.F.R. §
`
`42.72.
`
`
`
`Accordingly, it is
`
`ORDERED that the joint motions to terminate each of the eight
`
`identified proceedings are granted;
`
`FURTHER ORDERED that each of the eight identified proceedings is
`
`terminated; and
`
`
`
`FURTHER ORDERED that the settlement agreement (submitted as
`
`Exhibit 2001 in each of the eight proceedings) be treated as business
`
`confidential information, kept separate from the file of U.S. Patent Nos.
`
`5,987,434; 8,352,317 B2; 8,738,435 B2; 8,606,632 B2; 7,890,366 B2;
`
`7,856,375 B1; 6,999,938 B1; and 8,234,184 B2, respectively, and made
`
`available only to Federal Government agencies on written request, or to any
`
`person on a showing of good cause, under the provisions 37 C.F.R.
`
`§ 42.74(c).
`
`
`
`CBM2016-00055 (Patent 5,987,434)
`CBM2016-00057 (Patent 8,352,317 B2)
`CBM2016-00058 (Patent 8,738,435 B2)
`CBM2016-00059 (Patent 8,606,632 B2)
`CBM2016-00067 (Patent 7,890,366 B2)
`CBM2016-00069 (Patent 7,856,375 B1)
`CBM2016-00084 (Patent 6,999,938 B1)
`CBM2016-00085 (Patent 8,234,184 B2)
`
`
`
`
`PETITIONER:
`
`Walter Renner
`Roberto Devoto
`FISH & RICHARDSON P.C.
`CBM38784-0012CP2@fr.com
`PTABInbound@fr.com
`
`PATENT OWNER:
`
`Shawn Diedtrich
`PRUDENS LAW LLC
`shawn@prudenslaw.com
`
`Louis Hoffman
`LOUIS J. HOFFMAN, P.C.
`louis@valuablepatents.com
`
`John Love
`TUMEY L.L.P.
`jlove@tumeyllp.com
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