`571.272.7822
`
`
`Paper 16
`Entered: June 14, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Cases IPR2018-00758, IPR2018-00782, IPR2018-01121, IPR2018-01256,
`IPR2018-01318 (Reissued Patent RE46,206 E)1
`_______________
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`Granting the Parties’ Joint Motions to Terminate Proceedings
`35 U.S.C. § 317; 37 C.F.R. § 42.72
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`
`Cases IPR2018-00758, IPR2018-00782, IPR2018-01121, IPR2018-01256,
`IPR2018-01318 (Reissued Patent 46,206)
`
`
`I. DISCUSSION
`
`Pursuant to authorization by the Board, the parties filed the following
`in each proceeding identified above: (1) a Joint Motion to Terminate
`Proceeding (Case IPR2018-00758, Paper 24; Case IPR2018-00782,
`Paper 24; Case IPR2018-01121, Paper 16; IPR2018-01256, Paper 14;
`IPR2018-01318, Paper 13); (2) a true copy of the parties’ settlement
`agreement (Case IPR2018-00758, Paper 25; Case IPR2018-00782, Paper 25;
`Case IPR2018-01121, Paper 17; IPR2018-01256, Paper 15; IPR2018-01318,
`Paper 142); and (3) a joint request to treat the settlement agreement as
`business confidential information, and to keep separate from the file of the
`involved patent, under 37 C.F.R. § 42.74(c) (Case IPR2018-00758, Paper
`26; Case IPR2018-00782, Paper 26; Case IPR2018-001121, Paper 18;
`IPR2018-01256, Paper 16; IPR2018-01318, Paper 15).
`In each proceeding, oral argument has not been held, and a final
`written decision has not been entered. In the Joint Motion to Terminate
`Proceeding, the parties indicate that they have settled all their disputes
`regarding each proceeding, and have agreed to terminate each of the
`aforementioned proceedings. Case IPR2018-00758, Paper 24, 3; Case
`IPR2018-00782, Paper 24, 3; Case IPR2018-01121, Paper 16, 3;
`IPR2018-01256, Paper 14, 3; IPR2018-01318, Paper 13, 3.
`
`
`2 In each proceeding, 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
`
`
`
`Cases IPR2018-00758, IPR2018-00782, IPR2018-01121, IPR2018-01256,
`IPR2018-01318 (Reissued Patent 46,206)
`
`The parties “jointly certify that there are no other written or oral agreements
`or understandings, including any collateral agreements, between them,
`including but not limited to licenses, covenants not to sue, confidentiality
`agreements, payment agreements, or other agreements of any kind, that are
`made in connection with or in contemplation of, the termination of this
`proceeding.” Id. at 4. Under these particular circumstances, we determine
`that it is appropriate to terminate all five proceedings without rendering a
`final written decision. See 35 U.S.C. § 317; 37 C.F.R. § 42.72. We also
`have reviewed the true copy of the parties’ settlement agreement, and we
`determine that good cause exists to treat this settlement agreement as
`business confidential information, and keep it separate from the file of the
`involved patent, under 37 C.F.R. § 42.74(c).
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ requests to treat the true copy of their
`settlement agreement filed in each proceeding (Case IPR2018-00758,
`Paper 26; Case IPR2018-00782, Paper 26; Case IPR2018-01121, Paper 18;
`IPR2018-01256, Paper 16; IPR2018-01318, Paper 15) as business
`confidential information, and to keep separate from the file of the involved
`patent, under 37 C.F.R. § 42.74(c) are granted; and
`FURTHER ORDERED that each of the parties’ Joint Motion to
`Terminate Proceeding are granted, and the proceedings of IPR2018-00758,
`IPR2018-00782, IPR2018-01121, IPR2018-01256, and IPR2018-01318 are
`terminated.
`
`
`
`
`
`3
`
`
`
`Cases IPR2018-00758, IPR2018-00782, IPR2018-01121, IPR2018-01256,
`IPR2018-01318 (Reissued Patent 46,206)
`
`For PETITIONER:
`
`Brian Oaks
`Harrison Rich
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`For PATENT OWNER:
`
`Peter McAndrews
`Sharon Hwang
`Andrew Karp
`Michael Carrozza
`McANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`shwang@mcandrews-ip.com
`akarp@mcandrews-ip.com
`mcarrozza@mcandrews-ip.com
`
`
`Russell Rigby
`Tim Seeley
`James Hietala
`INTELLECTUAL VENTURES MANAGEMENT
`rrigby@intven.com
`tims@intven.com
`jhietala@intven.com
`
`
`
`
`
`4
`
`
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