`571-272-7822
`
`
`Paper No. 44
`Entered: January 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`RIVERBED TECHNOLOGY, INC.,
`Petitioner,
`v.
`SILVER PEAK SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00245
`Patent 8,392,684 B2
`_______________
`
`
`Before DENISE M. POTHIER, JUSTIN T. ARBES, and HYUN J. JUNG,
`Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`ORDER
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`IPR2014-00245
`Patent 8,392,684 B2
`
`
`I. DISCUSSION
`On June 9, 2015, we issued a Final Written Decision (Paper 42)
`granting Patent Owner’s Motion to Amend (Paper 16) to the extent that it
`requested cancellation of claims 1–24 of U.S. Patent No. 8,392,684 B2 (Ex.
`1001, “the ’684 patent”) but denying the motion as to its proposed substitute
`claims 25–48. On August 10, 2015, Silver Peak Systems, Inc. (“Patent
`Owner”) filed a Notice of Appeal (Paper 43). On November 16, 2015,
`Riverbed Technology, Inc. (“Petitioner”) informed the U.S. Court of
`Appeals for the Federal Circuit (“Federal Circuit”) that it would not be
`participating in the appeal. Ex. 3004.
`On October 24, 2017, the Federal Circuit issued its decision in Silver
`Peak Systems, Inc. v. Matal, vacating the Final Written Decision and
`remanding the case for further proceedings consistent with Aqua Products,
`Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). 698 F. App’x 1036 (Fed. Cir.
`2017). On December 15, 2017, the Federal Circuit issued its mandate
`returning jurisdiction over this case to the Board. Ex. 3005.
`Pursuant to PTAB Standard Operating Procedure 9, a conference call
`with the parties was arranged, but Petitioner informed the Board by email
`that it would not be further participating. During the conference call on
`January 10, 2018, Patent Owner indicated that the parties have settled their
`dispute regarding the ’684 patent and requested authorization to file a
`motion to terminate the proceeding. Because the Final Written Decision has
`been vacated, Patent Owner’s Motion to Amend, which seeks to cancel
`claims 1–24 of the ’684 patent and proposes substitute claims 25–48, is
`again unresolved. Patent Owner confirmed that it understood that, should
`the instant proceeding be terminated, the Motion to Amend would not be
`
`
`
`2
`
`
`
`IPR2014-00245
`Patent 8,392,684 B2
`
`decided (i.e., the original claims would not be cancelled and the proposed
`substitute claims would not be added to the ’684 patent). We also made
`clear to Patent Owner that a motion to terminate would have to be a joint
`motion filed with any settlement agreement or understanding, pursuant to
`35 U.S.C. § 317 and 37 C.F.R. § 42.74. Patent Owner represented that it
`would contact and work with Petitioner to file a joint motion to terminate. If
`the motion to terminate cannot be filed jointly by the parties, Patent Owner
`should request a conference call.
`Accordingly, we authorize the filing of a Joint Motion to Terminate,
`which should reference this Order. The Joint Motion to Terminate shall
`inform us concerning the status of any litigation or proceeding, including,
`but not limited to, proceedings in the U.S. Patent and Trademark Office,
`involving the ’684 patent. The Joint Motion to Terminate also must include
`a true copy of any settlement agreement or understanding (as a separate
`exhibit or exhibits) and any collateral agreements or understandings made in
`connection with, or in contemplation of, the termination of this inter partes
`review and certify that there are no other agreements or understandings
`made in connection with, or in contemplation of, the termination of this inter
`partes review. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). Any Joint
`Request to File the Settlement Agreement as Business Confidential
`Information must be filed as a separate paper contemporaneously with the
`Joint Motion to Terminate. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`
`II. ORDER
`It is ORDERED that the parties are authorized to file, within two
`weeks of the date of entry of this Order, (1) a Joint Motion to Terminate (as
`
`
`
`3
`
`
`
`IPR2014-00245
`Patent 8,392,684 B2
`
`a paper), (2) a true copy of any settlement agreement and/or understanding
`(as an exhibit), and (3) a Joint Request to File the Settlement Agreement as
`Business Confidential Information Pursuant to 35 U.S.C. § 317(b) (as a
`separate paper) in this proceeding in the manner and containing the
`information set forth above.
`
`PETITIONER:
`
`David M. O’Dell
`Kyle Howard
`John Russell Emerson
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`David.Odell.ipr@haynesboone.com
`Kyle.Howard.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Darren E. Donnelly
`Jason Amsel
`FENWICK & WEST LLP
`ddonnelly-ptab@fenwick.com
`jamsel-ptabr@fenwick.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
