`571-272-7822
`
`
`
`
`Paper 9
`Entered: April 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00136
`Case IPR2018-00137
`Patent 7,203,959 B21
`____________
`
`
`
`Before NEIL T. POWELL, DANIEL N. FISHMAN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`
`
`ORDER
`Dismissing the Proceedings
`35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.5, 42.71(a)
`
`
`
`On April 18, 2018, Petitioner filed substantively identical, authorized,
`
`unopposed, motions to dismiss in each of the above-identified cases.
`
`
`1 Because resolution of issues set forth in this order involves both of the
`above-identified cases, we exercise our discretion to issue a single order to
`be entered in each case.
`
`
`
`Case IPR2018-00136
`Case IPR2018-00137
`Patent 7,203,959 B2
`
`
`
`IPR2018-00136 Paper 8 (“Unopposed Motion to Dismiss IPR2018-00136
`
`Pre-Institution”) and IPR2018-00137 Paper 8 (“Unopposed Motion to
`
`Dismiss IPR2018-00137 Pre-Institution”) (individually or collectively
`
`referred to herein as “Mot.”). The motions aver that Patent Owner does not
`
`oppose the motions.
`
`Petitions in the above-identified cases were filed October 30, 2017.
`
`Patent Owner filed its Preliminary Response in IPR2018-00136 on
`
`February 9, 2018 and filed its Preliminary Response in IPR2018-00137 on
`
`February 14, 2018. The Board’s decisions on institution in these cases are,
`
`therefore, due in the near future (May 9, 2018 for IPR2018-00136 and May
`
`14, 2018 for IPR2018-00137). Although preliminary review of both cases
`
`had commenced, the Board had not yet reached a decision regarding
`
`institution in either of the above-identified cases.
`
`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.”
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement, if the settlement agreement includes all parties.
`
`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012).
`
`In the motions, Petitioner indicates that, although litigation between
`
`the parties is on-going relating to a number of patents, the District Court
`
`dismissed with prejudice the litigation claims relating to the ’959 patent (the
`
`subject of the Petitions in both above-identified cases). Mot. 1. Petitioner
`
`further indicates that there is no settlement agreement between the parties
`
`2
`
`
`
`Case IPR2018-00136
`Case IPR2018-00137
`Patent 7,203,959 B2
`
`
`
`“however, there is no pending dispute between Petitioner and Patent Owner
`
`in the related litigation” related to the ’959 patent (at issue in both above-
`
`identified cases before the Board). Id. at 2. Therefore, Petitioner requests
`
`dismissal and termination of the above-identified cases “to preserve both the
`
`Board’s and the parties’ resources, and to achieve an efficient and
`
`inexpensive resolution to this proceeding.” Id.
`
`Despite the expenditure of some resources by the Board on initial
`
`review of both above-identified cases, under these circumstances, we are
`
`persuaded that it is appropriate to terminate these proceedings with respect
`
`to both Petitioner and Patent Owner.
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Unopposed Motion to Dismiss IPR2018-
`
`00136 Pre-Institution is granted;
`
`FURTHER ORDERED that Petitioner’s Unopposed Motion to
`
`Dismiss IPR2018-00137 Pre-Institution is granted;
`
`FURTHER ORDERED that the proceeding in IPR2018-00136 is
`
`terminated with respect to both Petitioner and Patent Owner; and
`
`FURTHER ORDERED that the proceeding in IPR2018-00137 is
`
`terminated with respect to both Petitioner and Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2018-00136
`Case IPR2018-00137
`Patent 7,203,959 B2
`
`
`
`PETITIONER:
`
`Leo Lam
`llam@kvn.com
`
`PATENT OWNER:
`
`Chad Walters
`Chad.walters@bakerbotts.com
`
`Kurt Pankratz
`Kurt.pankratz@bakerbotts.com
`
`James Williams
`James.williams@bakerbotts.com
`
`Harrison Rich
`Harrison.rich@bakerbotts.com
`
`Clarke Stavinoha
`Clarke.stavinoha@bakerbotts.com
`
`
`
`4
`
`
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