`Tel: 571-272-7822
`
`Paper 27
`Entered: May 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01155 (Patent 8,694,657 B1)
`Case IPR2016-01067 (Patent 8,407,356 B1)
`Case IPR2016-01141 (Patent 8,458,245 B1)
`____________
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.74
`
`
`
`IPR2016-01155 (Patent 8,694,657 B1)
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`
`On April 24, 2017, Petitioner Microsoft Corporation and Patent
`
`Owner Windy City Innovations, LLC, filed a Joint Motion to Terminate
`
`Proceeding in each of the above-captioned proceedings (Paper 291) and a
`
`Joint Motion to Treat Settlement Agreement as Business Confidential
`
`Information in each proceeding (Paper 30). The parties represent that they
`
`have reached a Settlement Agreement, which is in writing and a true copy of
`
`which has been filed in conjunction with the above motions as required
`
`under 37 C.F.R. § 42.74(b). Paper 28, 2; Ex. 2015. The parties also certify
`
`that no other agreements exist between the parties concerning these cases or
`
`the patents at issue. Paper 28, 2.
`
`“An inter partes review instituted under this chapter 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.” 35 U.S.C.
`
`§ 317(a). Pursuant to Section 317(a), we grant the Motions to Terminate as
`
`to Petitioner Microsoft.
`
`Prior to the settlement between Microsoft and Windy City,
`
`Facebook, Inc., filed Petitions for inter partes review of U.S. Patent
`
`Nos. 8,694,657 B1, 8,407,356 B1, and 8,458,245 B1, along with
`
`corresponding Motions for Joinder with IPR2016-01155, IPR2016-01067,
`
`and IPR2016-01141, respectively. See Facebook, Inc. v. Windy City
`
`Innovations LLC., Case IPR2017-00622, Papers 2, 3; Facebook, Inc. v.
`
`Windy City Innovations LLC., Case IPR2017-00624, Papers 2, 3; Facebook,
`
`
`1 Unless otherwise specified, we refer to the paper and exhibit numbering in
`IPR2016-01155. Similar filings were made in each of the above-captioned
`cases.
`
`2
`
`
`
`IPR2016-01155 (Patent 8,694,657 B1)
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`
`Inc. v. Windy City Innovations LLC, Case IPR2017-00655, Papers 2, 3.
`
`Windy City filed its Preliminary Responses to Facebook’s Petitions in
`
`IPR2017-0622 and IPR2017-00624 on April 17, 2017, and its Preliminary
`
`Response to Facebook’s Petition in IPR2017-00655 on May 2, 2017. We
`
`have not yet ruled on Facebook’s Petitions or its Motions for Joinder.
`
`Under Section 317(a), if, after termination as to Microsoft, “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).” Our
`
`rules echo our discretion to terminate as to Patent Owner or to proceed with
`
`the trial. See 37 C.F.R. § 42.74(a) (“[T]he Board is not a party to the
`
`settlement and may independently determine any question of jurisdiction,
`
`patentability, or Office practice.”). In exercise of this discretion, we hold in
`
`abeyance our rulings on the Motions to Terminate as to Windy City until we
`
`have ruled on Facebook’s Petitions and Motions for Joinder in IPR2017-
`
`00622, IPR2017-00624, and IPR2017-00655.
`
`We further determine that the Settlement Agreement filed by the
`
`parties constitutes business confidential information. Therefore, the parties’
`
`Joint Motions to Treat Settlement Agreement as Business Confidential
`
`Information are granted.
`
`
`
`It is
`
`ORDER
`
`ORDERED that the parties’ Joint Motions to Terminate Proceedings
`
`are granted as to Petitioner Microsoft Corporation; and
`
`FURTHER ORDERED that the parties’ Joint Motions to Treat
`
`Settlement Agreement as Business Confidential Information are granted,
`
`3
`
`
`
`IPR2016-01155 (Patent 8,694,657 B1)
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`
`and Exhibit 2015 of IPR2016-01155, Exhibit 2015 of IPR2016-01067, and
`
`Exhibit 2011 of IPR2016-01141, shall be kept separate from the pertinent
`
`file consistent with 37 C.F.R. § 42.74(b).
`
`4
`
`
`
`PETITIONER:
`
`Joseph Micallef
`jmicallef@sidley.com
`
`Todd Siegel
`Todd.siegel@klarquist.com
`
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`
`
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