`571-272-7822
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`
`
` Paper 22
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`
` Entered: June 14, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01058
`Patent 7,359,971 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, MINN CHUNG, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`TERMINATION
`Settlement After Institution of Trial
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`IPR2018-01058
`Patent 7,359,971 B2
`
`
`I. DISCUSSION
`Upon Board authorization, Ericsson Inc. and Telefonaktiebolaget LM
`Ericsson (collectively, “Ericsson” or “Petitioner”) and Intellectual Ventures I
`LLC (“Intellectual Ventures” or “Patent Owner”) filed a Joint Motion To
`Terminate this inter partes review on June 13, 2019. Paper 19 (“Mot.”).
`Along with the Joint Motion, the parties filed a copy of a document they
`describe as “a true copy” (id. at 3) of their written settlement agreement
`(Paper 20)1 covering various matters, including those involving the patent at
`issue in this proceeding. The parties certify that there are no other
`agreements or understandings, oral or written, between the parties, including
`any collateral agreements, made in connection with, or in contemplation of,
`the termination of this proceeding. Mot. 4. The parties also filed a joint
`request to treat the settlement agreement as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 21.
`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.” In this
`proceeding, we have not yet reached a decision on the merits with respect to
`the patentability of any involved claim. Accordingly, we must terminate the
`review with respect to Ericsson, as Petitioner.
`
`
`1 The parties filed the true copy of their settlement agreement as a paper,
`rather than as a separate exhibit. The parties should have filed the true
`copy of their settlement agreement as a separate exhibit in accordance with
`37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things. All evidence must be filed in the form
`of an exhibit.”).
`
`2
`
`
`
`IPR2018-01058
`Patent 7,359,971 B2
`
`
`Furthermore, “[i]f 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).” 35 U.S.C. § 317(a). We, therefore, have discretion to
`terminate this review with respect to Intellectual Ventures.
`Although a Decision on Institution instituting trial was entered on
`November 15, 2018 (Paper 8), we have not held an oral hearing and we have
`not entered a Final Written Decision on the merits in this proceeding. In
`their Joint Motion, the parties represent that the settlement agreement
`resolves all disputes between the parties involving U.S. Patent No. 7,359,971
`B2 (Ex. 1001, “the ’971 patent”) at issue in this proceeding. Mot. 3. When,
`as here, we have not entered a Final Written Decision on the merits, we
`generally will terminate the trial after the filing of a settlement agreement.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012). Under the particular circumstances of this case, we
`determine that it is appropriate to terminate this inter partes review as to
`both Ericsson and Intellectual Ventures without rendering a Final Written
`Decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`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 under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c).
`
`3
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`IPR2018-01058
`Patent 7,359,971 B2
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`II. ORDER
`
`Accordingly, it is
`ORDERED that the parties’ joint request (Paper 21) to treat the
`parties’ settlement agreement as business confidential information is
`granted;
`FURTHER ORDERED that the settlement agreement (Paper 20) shall
`be treated as business confidential information, kept separate from the file of
`the ’971 patent, and made available only to Federal Government agencies on
`written request to the Board, or to any person on a showing of good cause,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that the Joint Motion to Terminate this inter
`partes review (Paper 19) is granted; and
`FURTHER ORDERED that this inter partes review is hereby
`terminated.
`
`
`
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`4
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`IPR2018-01058
`Patent 7,359,971 B2
`
`PETITIONER:
`Brian W. Oaks
`Megan V. LaDriere
`BAKER BOTTS L.L.P.
`brian.oaks@bakerbotts.com
`megan.ladriere@bakerbotts.com
`
`PATENT OWNER:
`Peter J. McAndrews
`Andrew B. Karp
`Gregory C. Schodde
`Sharon Hwang
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`akarp@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`shwang@mcandrews-ip-.com
`
`James Hietala
`Russell J. Rigby
`Tim Seeley
`INTELLECTUAL VENTURES MANAGEMENT
`jhietala@intven.com
`rrigby@intven.com
`tims@intven.com
`
`5
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`