`571-272-7822
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`
`
`
`
`Paper 12
`Entered: May 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOKIA OF AMERICA CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01641
`Patent 8,897,828 B2
`____________
`
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`IPR2018-01641
`Patent 8,897,828 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively “the Parties”) have
`requested that the above-identified inter partes review proceeding be
`terminated pursuant to a settlement. On April 29, 2019, we authorized the
`Parties via email to file a joint motion to terminate the above-identified
`proceeding. Exhibit 1059. On April 29, 2019, the Parties filed a Joint
`Motion to Terminate the above-identified proceeding (“Joint Motion”).
`Paper 10. The Parties filed a Patent License Agreement (Exhibit 1061,
`“Settlement Agreement”) and filed a Joint Request that Settlement
`Agreement Be Treated as Business Confidential Information and Kept
`Separate (“Joint Request”). Paper 11.
`II. DISCUSSION
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding,
`that the filed copy of the Settlement Agreement is a true copy, and there are
`no other written or oral agreements. Joint Motion 1–4. Further, the
`Settlement Agreement indicates it is a complete agreement. Settlement
`Agreement 22. The Parties also represent that their settlement agreement
`resolves all currently pending Patent Office and District Court proceedings
`between the Parties involving Patent 8,897,828. Joint Motion 3.
`
`
`
`2
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`
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`IPR2018-01641
`Patent 8,897,828 B2
`
`
`We instituted a trial on the above-identified proceeding on March 20,
`2019. Paper 7. We have not yet decided the merits of the proceeding, and a
`final written decision has not been entered. Notwithstanding that the
`proceeding has moved beyond the preliminary stage, the Parties have shown
`adequately that the termination of the proceeding is appropriate. Under
`these circumstances, we determine that good cause exists to terminate the
`proceeding with respect to the Parties.
`The Parties also requested that the Settlement Agreement be treated as
`business confidential information and be kept separate from the file of Patent
`8,897,828. Joint Request 1. The Parties failed to make an express showing
`in the Joint Request to support characterizing the Settlement Agreement as
`containing business confidential information. However, after reviewing the
`Settlement Agreement between Petitioner and Patent Owner, we find that the
`Settlement Agreement contains confidential business information regarding
`the terms of settlement. We determine that good cause exists to treat the
`Settlement Agreement between Petitioner and Patent Owner as business
`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate is granted, and
`IPR2018-01641 is terminated with respect to Petitioner and Patent Owner,
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the Joint Request to File Settlement
`
`
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`3
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`IPR2018-01641
`Patent 8,897,828 B2
`
`Agreement as Business Confidential Information is granted, and the
`Settlement Agreement shall be kept separate from the file of Patent
`8,897,828, and made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
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`4
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`IPR2018-01641
`Patent 8,897,828 B2
`
`For PETITIONER:
`Brianne Straka
`briannestraka@quinnemanuel.com
`
`John Poulos
`johnpoulos@quinnemanuel.com
`
`John McKee
`johnmckee@quinnemanuel.com
`
`For PATENT OWNER:
`Byron Pickard
`bpickard-ptab@sternekessler.com
`
`Daniel Block
`dblock-ptab@sternekessler.com
`
`Tyler Dutton
`tdutton-ptab@sternekessler.com
`
`James Hietala
`jhietala@intven.com
`
`Russell Rigby
`rrigby@intven.com
`
`Tim Seeley
`tims@intven.com
`
`
`
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`5
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