Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Entered: May 18, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TELULAR CORPORATION,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`__________________________
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`ORDER
`Termination of Trial Due to Settlement Agreement
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`571-272-7822
`
`Paper 29
`Entered: May 18, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TELULAR CORPORATION,
`Petitioner,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`__________________________
`
`
`
`
`
`
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`ORDER
`Termination of Trial Due to Settlement Agreement
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`
`
`I. INTRODUCTION
`
`By way of a Petition accorded a filing date of February 28, 2017 (see
`
`Paper 5, mailed March 29, 2017), Petitioner Telular Corporation
`
`(“Petitioner”) requested an inter partes review of claims 1–20 of U.S. Patent
`
`No. 9,319,471 B2 (Ex. 1001, “the ’471 patent”). Paper 2 (“Pet.”). Patent
`
`Owner PerdiemCo LLC (“Patent Owner”) filed a Preliminary Response to
`
`the Petition on June 29, 2017. Paper 7 (“Prelim. Resp.”). We issued a
`
`decision instituting review on September 20, 2017. Paper 13.
`
`Pursuant to Board authorization, Patent Owner and Petitioner filed a
`
`Joint Motion To Terminate the Proceedings on May 11, 2018. Paper 27.
`
`Along with the motion, the parties filed a copy of a document they describe
`
`as their settlement agreement, and the parties included in their motion a
`
`request to treat the settlement agreement as business confidential
`
`information. Paper 28 and Ex. 1029. See 37 C.F.R. § 42.74(c) (a party to a
`
`settlement may request that the settlement agreement be treated as business
`
`confidential and be kept separate from the patent file).
`
`II. DISCUSSION
`
`
`
`The Parties state the following in the Joint Motion to Terminate:
`
`“Patent Owner and Telular settled their dispute and executed a confidential
`
`settlement agreement to terminate this proceeding and the Parties’ related
`
`district court litigation. A Stipulation and Order of Dismissal agreed to by
`
`the Parties in the related district court litigation is being filed concurrently in
`
`the district court.” Paper 27, 2.
`
`
`
`Also currently pending before the Board are trials in four related
`
`matters involving the same parties: IPR2017-00968, IPR2017-00969,
`
`IPR2017-01007, and IPR2017-01269. The Parties’ Joint Motion also states
`
`
`
`
`2
`
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`
`that dismissal is concurrently being sought in those matters. Paper 27, 3–4.
`
`Additional related proceedings have either been terminated (IPR2016-
`
`01062, IPR2016-01063, IPR2017-00574, IPR02017-00575, and IPR2017-
`
`00636), or have proceeded to Final Written Decision (IPR2016-01061,
`
`IPR2016-01064, and IPR2016-01278). See id. at 2–3.
`
`
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.”
`
`Although a Decision to Institute was entered on September 20, 2017 (Paper
`
`13), we have not yet held an oral hearing (which, if requested by the parties,
`
`would have been scheduled for June 21, 2018 (Paper 14, 6)), and we have
`
`not entered a Final Written Decision on the merits.
`
`
`
`According to the Parties’ settlement agreement, termination of the
`
`proceedings would be part of resolution by the parties of all pending related
`
`matters. When, as here, we have not entered a Final Written Decision on the
`
`merits, we generally expect that trial will terminate after the filing of a
`
`settlement agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). As the parties have filed their written
`
`settlement agreement as to this proceeding and co-pending Cases IPR2017-
`
`00968, IPR2017-00969, IPR2017-01007, and IPR2017-01269, and a
`
`stipulation of dismissal has been filed in the co-pending district court case as
`
`part of the settlement, we determine that it is appropriate to terminate trial
`
`without entering a Final Written Decision as to the patentability of claims 1–
`
`20 of the ’471 patent.
`
`
`
`
`3
`
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`
`
`After reviewing the parties’ settlement agreement, we find the
`
`settlement agreement contains business confidential information regarding
`
`the terms of the settlement and good cause exists to treat the settlement
`
`agreement as business confidential information pursuant to 37 C.F.R.
`
`§ 42.74(c).
`
`
`
`It is
`
`III. ORDER
`
`ORDERED that the Joint Motion to Terminate trial is GRANTED,
`
`
`
`
`
`and this trial is hereby terminated;
`
`
`
`FURTHER ORDERED that the joint request to treat the parties’
`
`settlement agreement as business confidential information is GRANTED,
`
`and the settlement agreement (Exhibit 1029) shall be treated as business
`
`confidential information under 37 C.F.R. § 42.74(c), kept separate from the
`
`file of U.S. Patent 9,319,471 B2, and remain designated as “Board and
`
`Parties Only.”
`
`
`
`
`
`
`4
`
`
`
`Case IPR2017-00973
`Patent 9,319,471 B2
`
`PETITIONER:
`
`
`Vivek Ganti
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`sb@hkw-law.com
`perdiemIPR@hkw-law.com
`
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`PERDIEM-IPR@quinnemanuel.com
`
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`
`
`
`5
`
`
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