Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 9
`Entered: January 24, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`HYPERMEDIA NAVIGATION LLC,
`Patent Owner.
`____________
`Case IPR2018-01721 (Patent 7,383,323)
`Case IPR2018-01763 (Patent 9,083,672)
`Case IPR2018-01783 (Patent 7,478,144)
`Case IPR2018-01791 (Patent 8,250,173)
`Case IPR2018-01807 (Patent 7,383,324)
`Case IPR2018-01808 (Patent 7,424,523)
`Case IPR2018-01809 (Patent 7,769,830)
`Case IPR2019-00344 (Patent 9,772,814)
`Case IPR2019-00353 (Patent 9,864,575)1
`____________
`
`Before KEVIN F. TURNER, GARTH D. BAER, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`ORDER
`Termination of the Proceeding
`37 C.F.R. § 42.71(a), 42.72, 42.74
`
`
`1 The parties are not authorized to use this style of filing in subsequent
`papers without prior authorization.
`
`

`

`
`
`IPR2018-01721 (Patent 7,383,323), IPR2018-01763 (Patent 9,083,672),
`IPR2018-01783 (Patent 7,478,144), IPR2018-01791 (Patent 8,250,173),
`IPR2018-01807 (Patent 7,383,324), IPR2018-01808 (Patent 7,424,523),
`IPR2018-01809 (Patent 7,769,830), IPR2019-00344 (Patent 9,772,814),
`IPR2019-00353 (Patent 9,864,575)
`
`
`On January 15, 2019, the parties contacted the Board by email to
`request authorization to file joint motions to terminate these proceedings
`pursuant to a settlement agreement, as well as a joint request to keep the
`settlement agreement confidential. In an email sent on January 15, 2019, the
`Board authorized the parties to file motions to terminate the above-captioned
`proceedings and a request to keep the settlement agreement confidential.
`On January 17, 2019, the parties filed Joint Motions to Terminate the
`Proceedings. Paper 10.2 The parties concurrently filed joint motions to keep
`the settlement agreement as business confidential information, and for it to
`be kept separate from the patent file, pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (Paper 8), along with a copy of the written settlement
`agreement (Ex. 2001). The parties represent that Exhibit 2001 is a true and
`accurate copy of their settlement agreement. Paper 10, 3.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, if the settlement agreement includes all
`parties to the proceeding and unless the Board has already decided the merits
`of the proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012). The parties filed such a settlement
`agreement. Ex. 2001. Moreover, these proceedings are at a preliminary
`stage, Patent Owner has not yet filed a preliminary response, and no trial has
`
`
`2 IPR2018-01763, IPR2018-01783, IPR2018-01791, IPR2018-01807,
`IPR2018-01808, IPR2018-01809, IPR2019-00344, and IPR2019-00353
`include substantially the same motion raised by the Parties in IPR2018-
`01721. All citations are to IPR2018-01721, unless otherwise noted, because
`the motions include substantially the same arguments and requested relief.
`2
`
`
`

`

`
`
`IPR2018-01721 (Patent 7,383,323), IPR2018-01763 (Patent 9,083,672),
`IPR2018-01783 (Patent 7,478,144), IPR2018-01791 (Patent 8,250,173),
`IPR2018-01807 (Patent 7,383,324), IPR2018-01808 (Patent 7,424,523),
`IPR2018-01809 (Patent 7,769,830), IPR2019-00344 (Patent 9,772,814),
`IPR2019-00353 (Patent 9,864,575)
`
`been instituted on any claim. No decision whether to institute inter partes
`review has been made. Under these circumstances, we determine that it is
`appropriate to terminate this proceeding, as well as the additionally cited
`proceedings.
`After reviewing the parties’ settlement agreement, we find that the
`settlement agreement contains business confidential information regarding
`terms of the settlement and good cause exists to treat the settlement
`agreement as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c).
`Accordingly, it is
`ORDERED that the Motions to terminate IPR2018-01721 (Paper 10),
`IPR2018-01763 (Paper 7), IPR2018-01783 (Paper 7), IPR2018-01791
`(Paper 6), IPR2018-01807 (Paper 7), IPR2018-01808 (Paper 6), IPR2018-
`01809 (Paper 7), IPR2019-00344 (Paper 6), and IPR2019-00353 (Paper 6)
`as to both Petitioner and Patent Owner, are granted;
`FURTHER ORDERED that the joint request (Paper 8) to treat the
`parties’ settlement agreement (Ex. 2001) as business confidential
`information under 37 C.F.R. § 42.74(c), and for it to be kept separate from
`the patent file in each of the above-captioned proceedings, is granted; and
`FURTHER ORDERED that the Petition is dismissed under 37 C.F.R.
`§ 42.71(a), and this proceeding is terminated with respect to both Petitioner
`and Patent Owner.
`
`
`
`3
`
`
`

`

`
`
`IPR2018-01721 (Patent 7,383,323), IPR2018-01763 (Patent 9,083,672),
`IPR2018-01783 (Patent 7,478,144), IPR2018-01791 (Patent 8,250,173),
`IPR2018-01807 (Patent 7,383,324), IPR2018-01808 (Patent 7,424,523),
`IPR2018-01809 (Patent 7,769,830), IPR2019-00344 (Patent 9,772,814),
`IPR2019-00353 (Patent 9,864,575)
`
`PETITIONER:
`Heidi L. Keefe
`Daniel J. Knauss
`COOLEY LLP
`hkeefe@cooley.com
`dknauss@cooley.com
`
`PATENT OWNER:
`Michael L. Wach
`WACH LLC
`mikewachsr@gmail.com
`
`Jason M. Perilla
`THOMAS | HORSTEMEYER LLP
`Jason.perilla@thomashorstemeyer.com
`
`Adam L. Baumli
`BAUMLI LAW FIRM PLLC
`adam@baumlilawfirm.com
`
`4
`
`
`