`Tel: 571-272-7822
`
`
`Paper 8
`Entered: June 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORP.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2020-00598
`Patent 7,231,379 B2
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Without Prejudice Joint Motion to Terminate
`Granting Request to Keep Agreement Confidential
`35 U.S.C. §§ 317, 318; 37 C.F.R. § 42.5(a), 42.74
`
`
`
`
`
`IPR2020-00598
`Patent 7,231,379 B2
`
`
`On May 29, 2020, the parties filed a Joint Motion to Terminate.
`
`Paper 6. The parties concurrently filed a joint request to treat 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 7), along with a copy of the written settlement agreement (Ex. 1027).
`
`The parties represent that Exhibit 1027 is a true and accurate copy of their
`
`settlement agreement. Paper 13, 2. The parties also “represent that there are
`
`no other agreements, oral or written, between the parties made in connection
`
`with, or in contemplation of, the termination of the present proceeding.” Id.
`
`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.”
`
`However, 35 U.S.C. § 317(b) requires that:
`
`Any agreement or understanding between the patent owner and
`petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before the
`termination of the inter partes review as between the parties.
`
`(emphasis added). Based on our review of the settlement agreement, the
`
`Board has concerns that not all relevant collateral agreements have been
`
`filed. Accordingly, the parties’ motion for termination of the proceeding is
`
`denied without prejudice.
`
`The parties may refile the Joint Motion to Terminate with any related
`
`collateral agreements. To the extent there are any confidentiality issues with
`
`
`
`2
`
`
`
`IPR2020-00598
`Patent 7,231,379 B2
`
`
`collateral agreements, the parties may file those agreements under seal along
`
`with a motion to treat them as business confidential information.
`
`Alternatively, if the parties wish to discuss the issue with the Board,
`
`the parties may send an email to the Board proposing at least three dates and
`
`times that the parties are available for a conference call.
`
`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 Joint Motion to Terminate IPR2020-00598
`
`(Paper 6) as to both Petitioner and Patent Owner is denied without prejudice;
`
`FURTHER ORDERED that the joint request (Paper 7) to treat the
`
`parties’ settlement agreement (Ex. 1027) as business confidential
`
`information under 37 C.F.R. § 42.74(c), and for it to be kept separate from
`
`the patent file in the above-captioned proceeding, is granted.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00598
`Patent 7,231,379 B2
`
`
`For PETITIONER:
`
`James M. Heintz
`Alireza Babaei
`DLA PIPER LLP
`jim.heintz@dlapiper.com
`alireza.babaei@dlapiper.com
`
`
`
`For PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
`
`
`
`
`4
`
`
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