Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 24
`Entered: January 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2020-00470
`Patent 7,949,752 B2
`____________
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`Granting Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 24
`Entered: January 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2020-00470
`Patent 7,949,752 B2
`____________
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`Granting Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively “the Parties”) filed an amended1 joint motion to terminate this
`inter partes review. Paper 22 (“Joint Motion”). In support of the Joint
`Motion, the Parties filed a copy of a written confidential settlement
`agreement. Exs. 2021, 2022 (collectively, “Settlement Agreement”). The
`Parties also filed an amended joint request to treat the Settlement Agreement
`as business confidential information and to keep it separate from the files of
`the challenged patent. Paper 23 (“Joint Request”).
`II. DISCUSSION
`In the Joint Motion, the Parties state that they have resolved their
`disputes regarding the challenged patent, which include this proceeding and
`the related district court litigation. Joint Motion 1. The Parties state that the
`Settlement Agreement is “a true copy of any agreement or understanding . . .
`between Petitioner and Patent Owner made in connection with, or in
`contemplation of, the termination of the proceeding under 37 CFR
`§ 42.74(b) with this joint motion.” Id. Accordingly, the Parties jointly
`request termination of this proceeding. Id. at 2.
`
`1 The Parties originally filed a joint motion (Paper 20) to withdraw the
`Petition and a joint request (Paper 21) to treat the settlement agreement
`(Ex. 2021) as business confidential information and to keep it separate from
`the files of the challenged patent. Having reviewed the version of the
`settlement agreement filed with those papers, we determined that it
`references a “Schedule 1” and a “Schedule 2,” but it did not include those
`schedules. On January 25, 2021, Judges McKone, Hudalla, and Hamann
`held a teleconference with counsel for the parties to discuss the missing
`schedules, in connection with related IPR2020-01081. The Parties
`subsequently filed the amended papers (Papers 22, 23) and the missing
`schedules (Ex. 2022).
`
`2
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)2;
`see 35 U.S.C. §317(a); 37 C.F.R. § 42.72. Here, although the Board has
`instituted inter partes review of the challenged patent, the Board has not
`decided the merits of the proceeding. Under these circumstances, therefore,
`we determine that it is appropriate to terminate the proceeding as to the
`Parties, without rendering a final written decision.
`In the Joint Request, the Parties jointly request to treat the Settlement
`Agreement as business confidential information and to have it be kept
`separate from the files of the challenged patent and associated proceeding.
`Joint Request 1. After reviewing the Settlement Agreement, we find that the
`Settlement Agreement contains confidential business information regarding
`the terms of settlement. We determine the Settlement Agreement
`(Exs. 2021, 2022) shall be treated as business confidential information under
`37 C.F.R. § 42.74(c) and shall be kept separate from the files of the
`challenged patent and associated proceeding. See 35 U.S.C. § 317(b).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the amended joint motion to terminate the inter
`partes review (Paper 22) is granted, and the above-captioned proceeding is
`hereby terminated; and
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`
`FURTHER ORDERED that the amended joint request to treat the
`Settlement Agreement as business confidential information (Paper 23) is
`granted, and the Settlement Agreement (Exs. 2021, 2022) shall remain
`designated as “Parties and Board Only” in the Board’s filing system, shall
`made available only to Federal Government agencies on written request, or
`to any person on a showing of good cause, and shall be kept separate from
`the files of the involved patent and associated proceeding, pursuant to
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00470
`Patent 7,949,752 B2
`
`PETITIONER:
`
`Katherine Vidal
`Louis Campbell
`Michael Tomasulo
`WINSTON & STRAWN LLP
`kvidal@winston.com
`llcampbell@winston.com
`mtomasulo@winston.com
`
`
`PATENT OWNER:
`
`Byron Pickard
`Daniel Block
`Lestin Kenton
`James Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`jhietala@sternekessler.com
`
`Russell Rigby
`INTELLECTUAL VENTURES
`rrigby@intven.com
`
`
`5
`
`
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