`Tel: 571-272-7822
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`Paper 17
`Entered: June 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01380
`Patent 8,682,357 B2
`_______________
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`TERMINATION
`Settlement After Institution of Trial
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
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`IPR2018-01380
`Patent 8,682,357 B2
`
`
`I. DISCUSSION
`Upon Board authorization, Ericsson Inc. and Telefonaktiebolaget LM
`Ericsson (collectively, “Ericsson” or “Petitioner”) and Intellectual Ventures
`II LLC (“Intellectual Ventures” or “Patent Owner”) filed a Joint Motion To
`Terminate this inter partes review on June 13, 2019. Paper 14 (“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
`(Exhibit 1026) 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 15.
`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.
`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.
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`IPR2018-01380
`Patent 8,682,357 B2
`
`Although a Decision on Institution instituting trial was entered on
`January 14, 2019 (Paper 7), 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 the disputes 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).
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the parties’ joint request (Paper 15) to treat the
`parties’ settlement agreement as business confidential information is
`granted;
`FURTHER ORDERED that the settlement agreement (Exhibit 1026)
`shall be treated as business confidential information, kept separate from the
`file of the ’357 patent, and made available only to Federal Government
`
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`IPR2018-01380
`Patent 8,682,357 B2
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`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 14) is granted; and
`FURTHER ORDERED that this inter partes review is hereby
`terminated.
`
`
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`IPR2018-01380
`Patent 8,682,357 B2
`
`For PETITIONER:
`J. Andrew Lowes
`Clint Wilkins
`Adam Fowles
`John Emerson
`HAYNES & BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`adam.fowles.ipr@haynesboone.com
`russ.emerson@haynesboone.com
`
`For PATENT OWNER:
`
`Byron Pickard
`Daniel Block
`Tyler Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`tdutton-ptab@sternekessler.com
`
`Russell Rigby
`Tim Seeley
`INTELLECTUAL VENTURES LLC
`rrigby@intven.com
`tims@intven.com
`
`
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