`Trials@uspto.gov
`571-272-7822 Entered: April 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION,
`Petitioner,
`
`v.
`
`MAZ ENCRYPTION TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00624
`Patent 7,096,358
`____________
`
`
`
`Before BARBARA A. BENOIT, STACY B. MARGOLIES, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`
`SETTLEMENT
`Prior to Institution of Trial
`35 U.S.C. § 316(a)(4) and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`IPR2019-00624
`Patent 7,096,358
`
`On April 9, 2019, the parties filed a joint motion to terminate, along
`with a true copy of their written settlement agreement. Paper 8; Ex. 1003
`(“Settlement Agreement”). The parties request termination of the
`proceeding and state that the parties have reached agreement to end their
`dispute concerning U.S. Patent No. 7,096,358 (“the ’358 patent”). Paper 8,
`1. The parties also state that they have agreed to dismiss the related district
`court litigation concerning the ’358 patent and that there are no other current
`litigation proceedings involving the ’358 patent. Id. at 2–3. The parties also
`jointly request that the Settlement Agreement be treated as confidential
`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Id.
`at 1–2; Paper 9. The parties certify that there is no other agreement or
`understanding between them, including other collateral agreements, made in
`connection with, or in contemplation of, the termination of the instant
`proceeding. Paper 8, 1.
`We are in the very early stages of this proceeding. BlackBerry
`Corporation filed a petition for inter partes review on January 25, 2019.
`Paper 1. Patent Owner Maz Encryption Technologies LLC has not filed a
`preliminary response, which may be filed no later than May 12, 2019. See
`Paper 3. We have not yet determined whether to institute an inter partes
`review. Based on the facts and circumstances of this proceeding, it is
`appropriate to terminate the proceeding without rendering a final written
`decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`Accordingly, it is:
`ORDERED that the parties’ joint request that the Settlement
`Agreement be treated as business confidential information, to be kept
`separate from the patent file, is granted;
`
`2
`
`
`
`IPR2019-00624
`Patent 7,096,358
`
`FURTHER ORDERED that the joint motion to terminate the
`proceeding is granted; and
`FURTHER ORDERED that the proceeding is terminated.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00624
`Patent 7,096,358
`
`FOR PETITIONER:
`Robert C. Mattson
`Michael D. West
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketwest@oblon.com
`
`FOR PATENT OWNER:
`Neal Massand
`Timothy Wang
`Hao Ni
`NI, WANG & MASSAND, PLLC
`nmassand@nilawfirm.com
`twang@nilawfirm.com
`hni@nilawfirm.com
`
`
`4
`
`
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