throbber
Trial@uspto.gov
`571-272-7822
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` Paper 49
` Dated: December 14, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DELL INC.,
`Petitioner
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
` IPR2020-01162 (Patent 8,948,756 B2)1
`
`
`Before TERRENCE W. MCMILLIN, AMANDA F. WIEKER,
`MONICA S. ULLAGADDI, and RUSSELL E. CASS,
`Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317(a),(b); 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`1 This Order addresses issues that are the same in the above-captioned
`proceedings. The parties are not authorized to use a multi-case caption.
`Moreover, this is not an expanded panel. Each of the four listed judges are
`part of three-judge panels assigned to the listed proceedings.
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`I.
`INTRODUCTION
`
`On December 10, 2021, Dell Inc. and Patent Owner 3G Licensing
`S.A. (hereinafter “Joint Movants”) filed, in each of the above-identified
`proceedings, a Joint Motion to Terminate Proceedings. See, e.g.,
`IPR2020-01157, Paper 47 (“Motion”).2 The Joint Movants also filed, on
`December 10, 2021, a true copy of a settlement agreement (Ex. 1034,
`“Settlement Agreement”) and a Joint Request to Treat Exhibit 1034 as
`Business Confidential Information. See, e.g., IPR2020-01157, Paper 48
`(“Request”).
`
`II. DISCUSSION
`The Motion states: “Dell and 3G have reached a Settlement and
`
`License Agreement (‘Agreement’) to resolve the Parties’ disputes at issue in
`this proceeding.” Mot. 1. The Motion also states: “Pursuant to 37 C.F.R.
`§ 42.74(b), the Parties’ Agreement is in writing, and a true and correct copy
`is being filed as Exhibit 1034.” Id. The Motion further states: “No other
`such agreements, written or oral, exist between or among the Parties relating
`to this proceeding.” Id. at 2. Accordingly, the Motion states that “the
`Parties respectfully request that the Board terminate this inter partes
`review.” Id. at 3.
`
`
`2 For purposes of expediency, we cite to papers and exhibits filed in
`IPR2020-01157, unless otherwise noted. The Parties filed similar papers
`and exhibits in each of the above-identified proceedings.
`
`-2-
`
`
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86
`(November 2019).3 Here, although the Board has instituted inter partes
`review of the challenged patents, the Board has not decided the merits of
`these proceedings. Under these circumstances, we grant the Motion to
`terminate in each proceeding.
`Additionally, the Request states that “[t]he Parties consider the
`Settlement and License Agreement to contain highly sensitive business
`confidential information that would substantially harm their business
`interests if publicly disclosed,” and that “[t]he Settlement and License
`Agreement has been filed for access ‘Available only to board.’” Request 2.
`Therefore, the Joint Movants:
`request that the Settlement and License Agreement (Confidential
`Exhibit 1034) (i) be treated as business confidential information,
`(ii) be maintained separate from the publicly available file of the
`involved patent, and (iii) shall be made available only to Federal
`Government agencies on written request, or to persons showing
`good cause on written request, with any such written request
`being served on the parties on the day it is provided to the Board,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Id.
`
`We grant-in-part the Request. The Settlement Agreement in each
`proceeding shall be kept separate from the files of the applicable challenged
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`-3-
`
`
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`patent (i.e., U.S. Patent No. 7,274,933 B2, U.S. Patent No. 7,460,868 B2,
`U.S. Patent No. 7,596,375 B2, U.S. Patent No. 8,275,374 B2, U.S. Patent
`No. 8,472,955 B2, and U.S. Patent No. 8,948,756 B2), and will be made
`available only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). However, we deny the portion of the Request seeking an order
`from the Board that, in the event a person or entity makes a written request
`as stated in 37 C.F.R. § 42.74(c)(1)–(2) for access to the Settlement
`Agreement, any such written request be served upon the parties on the day
`the written request is provided to the Board. Neither the statute nor the rule
`includes such a requirement.
`
`III. ORDER
`In view of the foregoing, it is:
`ORDERED that the Joint Motion to Terminate Proceedings in each of
`
`the above-identified proceedings is granted, and that Dell Inc. and 3G
`Licensing S.A. are herein terminated from these proceedings;
`
`FURTHER ORDERED that the Joint Request to Treat Exhibit 1034
`as Business Confidential Information in each of the above-identified
`proceedings is granted-in-part and denied-in-part, in the manner noted
`above; and
`FURTHER ORDERED that the Settlement Agreement in each
`proceeding shall be kept separate from the files of U.S. Patent No. 7,274,933
`B2, U.S. Patent No. 7,460,868 B2, U.S. Patent No. 7,596,375 B2,
`U.S. Patent No. 8,275,374 B2, U.S. Patent No. 8,472,955 B2, and U.S.
`
`
`
`
`
`-4-
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`Patent No. 8,948,756 B2, and will be made available only under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`
`-5-
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`For PETITIONER:
`
`Brian Buroker
`Paul Torchia
`Nathan Curtis
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`John Hutchins
`Chunhsi Mu
`Wesley Jones
`BANNER & WITCOFF, LTD.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`
`For PATENT OWNER:
`
`Timothy Devlin
`Neil Benchell
`Stephanie Berger
`DEVLIN LAW FIRM LLC
`td-ptab@devlinlawfirm.com
`nbenchell@devlinlawfirm.com
`sberger@devlinlawfirm.com
`
`
`
`
`
`-6-
`
`

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