`Tel: 571-272-7822
`
`
`Paper 13
`Entered: July 7, 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
`Granting Motion to Terminate
`Granting Request to Keep Agreements Confidential
`35 U.S.C. §§ 317, 318; 37 C.F.R. § 42.5(a), 42.74
`
`
`
`
`
`IPR2020-00598
`Patent 7,231,379 B2
`
`
`On July 1, 2020, the parties filed a joint Motion to Terminate. Paper
`11. The parties concurrently filed a joint request to treat the settlement
`agreement and a related collateral agreement as business confidential
`information, and for them 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 12). The parties also
`filed a copy of the written settlement agreement (Ex. 2001) and collateral
`agreement (Ex. 2002). The parties represent that Exhibit 2001 is a true and
`accurate copy of their settlement agreement and that Exhibit 2002 is the only
`related collateral agreement. Paper 11.
`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.” 35
`U.S.C. § 317(b) requires that:
`Any agreement or understanding between the patent owner and
`a 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.
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement, if the settlement agreement includes all parties to
`the proceeding and the parties file all collateral agreements as required by
`35 U.S.C. § 317(b), unless the Board has already decided the merits of the
`proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012). The parties filed such a settlement
`agreement. Ex. 2001. The parties also filed a related collateral agreement
`
`
`
`2
`
`
`
`IPR2020-00598
`Patent 7,231,379 B2
`
`and represent that it is the only such related agreement. Ex. 2002, Paper 11.
`Moreover, this proceeding is at a preliminary stage and no trial has been
`instituted. Under these circumstances, we determine that it is appropriate to
`terminate this proceeding.
`After reviewing the parties’ settlement agreement and the collateral
`agreement, we find that the settlement agreement and collateral agreement
`each contain business confidential information and good cause exists to treat
`the settlement agreement and collateral agreement as business confidential
`information pursuant to 37 C.F.R. § 42.74(c).
`Accordingly, it is
`ORDERED that the Motion to terminate IPR2020-00598 (Paper 11)
`as to both Petitioner and Patent Owner is granted;
`FURTHER ORDERED that the joint request (Paper 12) to treat the
`parties’ settlement agreement (Ex. 2001) and the collateral agreement
`(Ex. 2002) as business confidential information under 37 C.F.R. § 42.74(c),
`and for them to be kept separate from the patent file in the above-captioned
`proceeding, is granted; and
`FURTHER ORDERED that the Petition is dismissed under 37 C.F.R.
`§ 42.71(a), and this proceeding is terminated with respect to both Petitioner
`and Patent Owner.
`
`
`
`
`
`
`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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