`571-272-7822
`
`Paper 22
`Date: January 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`v.
`IMPLICIT, LLC,
`Patent Owner.
`
`IPR2020-00585, IPR2020-00586, IPR2020-00587,
`IPR2020-00590, IPR2020-00591, and IPR2020-005921
`
`Before THOMAS L. GIANNETTI, BARBARA A. PARVIS,
`SHEILA F. McSHANE, and NABEEL U. KHAN,
`Administrative Patent Judges. 2
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`
`
`
`1 The parties may not use this caption for any subsequent papers without
`prior Board authorization.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges of each of the three-member panels from all the respective
`proceedings are listed.
`
`
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`
`On January 15, 2021, pursuant to the Board’s authorization, Juniper
`Networks, Inc. (“Petitioner”) and Implicit, LLC (“Patent Owner”) filed a
`joint motion in each of the cases3 to terminate each of the instant inter partes
`reviews pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. Paper 22
`(“Joint Motion” or “Mot.”).4 The Joint Motion was accompanied by a true,
`unredacted copy of a Settlement Agreement (Exhibit 2016). The parties also
`request that the Settlement Agreement be treated as business confidential
`information, to be kept separate from the patent file, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Mot. 3.
`In its Joint Motion, the parties jointly request termination of the
`proceedings. Mot. 1. The parties state that they have settled their disputes
`regarding the challenged patents and filed a stipulation of dismissal on
`January 4, 2021 in the parallel litigation. Id. at 2. The parties state that
`“[g]iven the early stages of this proceeding, the Parties submit it is
`appropriate to terminate review under Section 317(a) and not proceed to a
`final written decision.” Id. at 3.
`The Board generally expects that “a proceeding will terminate after
`the filing of a settlement agreement, unless the Board has already decided
`
`
`3 The challenged patents in these proceedings are, respectively, U.S. Patent
`Nos. 8,694,683 B2, 9,270,790 B2, 9,591,104 B2, 10,027,780 B2, 10,033,839
`B2, and 10,225,378 B2.
`4 For purposes of expediency, we cite to the Motion and Exhibits filed in
`IPR2020-00585, unless otherwise indicated. The parties filed
`similar Motions and Exhibits in IPR2020-00586, IPR2020-00587,
`IPR2020-00590, IPR2020-00591, and IPR2020-00592.
`
`2
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`the merits.” Consolidated Trial Practice Guide, 86 (Nov. 2019),
`https://go.usa.gov/xpvPF; see also 35 U.S.C. § 327; 37 C.F.R. § 42.72.
`Here, although the Board has instituted inter partes review of the challenged
`patents, the Board has not decided the merits of the proceeding. Under these
`circumstances, therefore, we determine that it is appropriate to terminate this
`proceeding with respect to both Petitioner and Patent Owner. Accordingly,
`we grant the parties’ Joint Motions to terminate.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement
`treated as business confidential information and kept separate from the files
`of the challenged patents in these proceedings. Thus, we grant the parties’
`request to treat the Settlement Agreement as business confidential.
`Accordingly, it is
`ORDERED that the Joint Motions to terminate the instant proceedings
`are GRANTED;
`FURTHER ORDERED that the joint request to treat the parties’
`Settlement Agreement (IPR2020-00585, Exhibit 2016; IPR2020-00586,
`Exhibit 2015; IPR2020-00587, Exhibit 2015; IPR2020-00590, Exhibit 2015;
`IPR2020-00591, Exhibit 2015; IPR2020-00592, Exhibit 2015) as business
`confidential information, to be kept separate from the patent file, is
`GRANTED; and
`FURTHER ORDERED that the instant proceedings are
`TERMINATED.
`
`
`
`
`3
`
`
`
`IPR2020-00585 (Patent 8,694,683 B2)
`IPR2020-00586 (Patent 9,270,790 B2)
`IPR2020-00587 (Patent 9,591,104 B2)
`IPR2020-00590 (Patent 10,027,780 B2)
`IPR2020-00591 (Patent 10,033,839 B2)
`IPR2020-00592 (Patent 10,225,378 B2)
`
`FOR PETITIONER:
`Jonathan Lindsay
`David McPhie
`Dennis J. Courtney
`IRELL & MANELLA LLP
`jlindsay@irell.com
`dmcphie@irell.com
`dcourtney@irell.com
`
`
`
`FOR PATENT OWNER:
`
`Christian Hurt
`William E. Davis, III
`DAVIS FIRM, PC
`churt@davisfirm.com
`bdavis@davisfirm.com
`
`
`
`
`
`4
`
`
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