`Tel: 571-272-7822
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`Paper 16
`Entered: June 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ERICSSON INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Case IPR2018-01694
`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
`Granting Joint Request to Keep Confidential and Separate
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`IPR2018-01694
`Patent 8,897,828 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as “the Parties”)
`have requested that the above-identified inter partes review proceeding be
`terminated pursuant to a settlement. On June 12, 2019, we authorized the
`Parties to file a joint motion to terminate the Petition in this proceeding. On
`June 13, 2019, the Parties filed a Joint Motion to Terminate this proceeding
`(“Joint Motion”). Paper 13. Along with the Joint Motion, the Parties filed a
`copy of a Confidential Settlement Agreement and Patent License Agreement
`(“Settlement Agreement”).1 Paper 14. The Parties also filed a Joint Request
`that the Settlement Agreement be Treated as Business Confidential
`Information and be Kept Separate pursuant to 37 C.F.R. § 42.74(c) (“Joint
`Request”). Paper 15.
`
`II. DISCUSSION
`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 Settlement Agreement is a true and accurate copy, and that
`there are no other written or oral agreements. Paper 13, 1, 3–4.
`We have not yet decided the merits of this 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 this proceeding is appropriate. Under these
`
`
`1 The Parties filed the Settlement Agreement as a Paper. The Parties are
`reminded that settlement agreements should be filed as exhibits. See
`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
`
`
`
`IPR2018-01694
`Patent 8,897,828 B2
`
`circumstances, we determine that good cause exists to terminate this
`proceeding.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`files of the patent involved in this inter partes proceeding. Paper 15, 1.
`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 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
`IPR2018-01694 is terminated; and
`FURTHER ORDERED that the Parties’ Joint Request that the
`Settlement Agreement be Treated as Business Confidential Information and
`be Kept Separate is granted, and the Settlement Agreements shall be kept
`separate from the file of Patent 8,897,828 B2 and made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`
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`
`3
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`
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`IPR2018-01694
`Patent 8,897,828 B2
`
`
`PETITIONER:
`Chad Walters
`Harrison Rich
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`
`PATENT OWNER:
`Byron Pickard
`Daniel Block
`Tyler Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`tdutton-ptab@sternekessler.com
`
`James Hietala Russell
`Rigby Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`rrigby@intven.com
`tim@intven.com
`
`4
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`
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