`571-272-7822
`
`
`
`
`
`Paper 26
`Entered: February 6, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CITRIX SYSTEMS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2019-00844 (Patent 8,631,120 B2)
`Case IPR2019-00845 (Patent 9,148,493 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, PATRICK M. BOUCHER, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`1 This Decision addresses issues pertaining to both cases.
`
`
`
`Case IPR2019-00844 (Patent 8,631,120 B2)
`Case IPR2019-00845 (Patent 9,148,493 B2)
`
`
`Petitioner Avi Networks, Inc. and Patent Owner Citrix Systems, Inc.
`
`have requested jointly that the above-identified inter partes review
`
`proceedings be terminated due to a settlement. With our authorization in
`
`each proceeding, the parties filed a “Joint Motion to Terminate Proceeding
`
`Under 35 U.S.C. § 317” (Paper 24 (“Joint Motion”)).2 Along with the Joint
`
`Motion, the parties filed a “Settlement Agreement” (Ex. 2013 (“Settlement
`
`Agreement”)), as well as a “Joint Motion to File Settlement Agreement as
`
`Business Confidential Information Under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.72(c)” (Paper 25).
`
`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.” The
`
`parties indicate that the submitted written confidential settlement agreement
`
`fully resolves the disputes between them regarding the challenged patents
`
`and that “there are no collateral agreements or understandings made in
`
`connection with, or in contemplation of, the termination of the present inter
`
`partes review[s].” Joint Motion 1–2. In addition, the parties indicate that,
`
`on December 30, 2019, the district court was notified of the settlement
`
`agreement, which also resolves the disputes regarding the challenged patents
`
`in Civil Action No. 1:17-cv-01843-LPS (D. Del.) and that the parties filed
`
`jointly a stipulation to dismiss all claims pending in that case. Id. at 3.
`
`
`2 The parties filed similar papers and exhibits in each of the instant
`proceedings. See IPR2019-00844, Papers 24, 25, Ex. 2013; IPR2019-00845,
`Papers 24, 25, Ex. 2013. We refer to those filed in Case IPR2019-00844 for
`convenience.
`
` 1
`
`
`
`
`
`
`Case IPR2019-00844 (Patent 8,631,120 B2)
`Case IPR2019-00845 (Patent 9,148,493 B2)
`
`
`
`We instituted a trial in each of the above-identified proceedings on
`
`October 1, 2019. Paper 19. We have not yet decided the merits of the
`
`proceedings, and a final written decision has not been entered in either
`
`matter. Notwithstanding that the proceedings have moved beyond the
`
`preliminary stage, the parties have shown adequately that the termination of
`
`the proceedings is appropriate. Under these circumstances, we determine
`
`that good cause exists to terminate the proceedings in both matters. In
`
`addition, after considering the Settlement Agreement, we also conclude that
`
`it is appropriate to treat the Settlement Agreement (Ex. 2013) as business
`
`confidential information to be kept separate from the patent file in both
`
`matters. See 37 C.F.R. § 42.74(c).
`
`Therefore, it is
`
`ORDER
`
`ORDERED that the joint motions to terminate the proceedings in
`
`IPR2019-00844 and IPR2019-00845 are granted; and
`
`FURTHER ORDERED that the parties’ joint request (Paper 25) to
`
`treat the parties’ settlement agreement (Ex. 2013) as business confidential
`
`information is granted, and the settlement agreement shall be kept separate
`
`from the files of U.S. Patent Nos. 8,631,120 B2 and 9,148,493 B2, 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
`
` 2
`
`
`
`
`C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`Case IPR2019-00844 (Patent 8,631,120 B2)
`Case IPR2019-00845 (Patent 9,148,493 B2)
`
`
`PETITIONER:
`
`Y. Ernest Hsin
`Josh Krevitt
`Ryan Iwahashi
`Gibson, Dunn & Crutcher LLP
`EHsin@gibsondunn.com
`JKrevitt@gibsondunn.com
`RIwahashi@gibsondunn.com
`
`
`PATENT OWNER:
`
`Stephen J. Tyran
`Lesley A. Hamlin
`Citrix Systems, Inc.
`Stephen.tytran@citrix.com
`Lesley.hamlin@citrix.com
`
`W. Karl Renner
`David L. Holt
`Craig E. Carlson
`Fish & Richardson P.C.
`IPR23652-0023IP2@fr.com
`PTABInbound@fr.com
`
`
` 3
`
`
`
`
`
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