`
`Trials@uspto.gov
`571.272.7822 Entered: July 8, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IPDATATEL, LLC; ALULA HOLDINGS, LLC; AND
`RESOLUTION PRODUCTS, LLC,
`Petitioner,
`v.
`ICN ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01823
`Patent 8,478,871 B2
`____________
`
`
`Before BENJAMIN D. M. WOOD, KEVIN W. CHERRY, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`CHERRY, 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
`
`
`
`
`
`
`
`
`IPR2018-01823
`Patent 8,478,871 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (“Parties”) have requested that this inter
`partes review proceeding be terminated. On July 3, 2019, the Parties filed a
`Joint Motion to Terminate (“Motion”). Paper 22. The Parties represent that
`the Board authorized filing of the Motion. Id. at 1. The Parties also filed a
`Joint Motion (“Request”) (Paper 23) to treat their Settlement Agreement
`(Ex. 1033) as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`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.
`The Parties represent that they have reached an agreement to jointly
`seek termination of this inter partes review proceeding, and that the filed
`copy of the Settlement Agreement is a true and complete copy. Paper 22, 1.
`The Parties further represent that they have resolved their disputes in this
`proceeding and the related litigation1 regarding U.S. Patent No. 8,478,871.
`Paper 22, 1–2.
`We instituted a trial on April 17, 2019. See Paper 17. We have not
`yet decided the merits of this proceeding, and a final written decision has not
`been entered. Notwithstanding that this proceeding has moved beyond the
`
`
`1 Alarm.com Inc. & ICN Acquisition, LLC v. ipDataTel, Civil Action No.
`4:18-cv-02108 (S.D. Tex.).
`
`2
`
`
`
`IPR2018-01823
`Patent 8,478,871 B2
`
`preliminary stage, the Parties have shown adequately that the termination of
`this proceeding is appropriate. Under these circumstances, we determine
`that good cause exists to terminate the proceeding with respect to the Parties.
`Regarding the Parties’ Request to treat the Settlement Agreement as
`business confidential information to be kept separate from the file of U.S.
`Patent No. 8,478,871, we determine that good cause exists to treat the
`Settlement Agreement 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 (Paper 22) is granted,
`and that this proceeding 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 Motion (Paper 23) to treat the
`Settlement Agreement (Ex. 1033) as business confidential information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01823
`Patent 8,478,871 B2
`
`For PETITIONER:
`
`Richard M. Marsh, Jr.
`Walter C. Linder
`FAEGRE BAKER DANIELS LLP
`richard.marsh@faegrebd.com
`walter.linder@faegrebd.com
`
`For PATENT OWNER:
`
`Matthew A. Argenti
`Michael T. Rosato
`Quincy Lu
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`qalu@wsgr.com
`
`
`
`
`4
`
`