`571-272-7822
`
`Paper 11
`Date: July 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SALESFORCE.COM, INC.,
`Petitioner,
`v.
`MICHAEL PHILIP KAUFMAN,
`Patent Owner.
`
`IPR2021-00396 (Patent 10,025,801 B2)
`IPR2021-00397 (Patent 7,885,981 B2)1
`
`
`
`
`
`
`
`
`
`Before BARBARA A. PARVIS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`1 This Order applies to each of the listed proceedings. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2021-00396 (Patent 10,025,801 B2)
`IPR2021-00397 (Patent 7,885,981 B2)
`I.
`INTRODUCTION
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively, “the Parties”) filed a Joint Motion to terminate each of the
`above-identified proceedings. Paper 102 (“Mot.”). Along with each Joint
`Motion, the Parties filed a copy of a confidential Settlement Agreement
`(Ex. 2003), as well as a Joint Motion to Keep Confidential and Separate the
`Settlement Agreement under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(Paper 11 (“Joint Request”)).
`
`II. DISUCSSION
`In the Joint Motion, the Parties “jointly request termination of the
`inter partes review of U.S. Patent No. 10,025,801 (Case No. IPR2021-
`00396) and U.S. Patent No. 7,885,981 (Case No. IPR2021-00397).” Mot. 1.
`The Parties represent that they have “executed a settlement agreement that
`resolves all of their disputes concerning U.S. Patent Nos. 10,025,801 and
`7,885,981—expressly including the present IPRs.” Id. at 2. The Parties
`further represent that “a true and correct copy of the Litigation Settlement
`Agreement has been filed as Exhibit 2003” and “[t]here are no other
`agreements between the parties.” Id. at 3.
`These proceedings are still in their preliminary stages. We have not
`entered a decision on whether to institute inter partes review in these
`proceedings. In view of the early stage of these proceedings and the
`settlement between the parties, we determine that good cause exists to
`terminate these proceedings with respect to the parties.
`
`
`2 For purposes of expediency, we cite to Papers and Exhibits filed
`in IPR2021-00396. Corresponding Papers and Exhibits were filed in each of
`the captioned proceedings, as shown in the Appendix.
`
`2
`
`
`
`IPR2021-00396 (Patent 10,025,801 B2)
`IPR2021-00397 (Patent 7,885,981 B2)
`We also have reviewed the Settlement Agreement, and we determine
`that the Settlement Agreement contains business confidential information
`regarding the terms of the settlement, and that good cause exists to treat the
`Settlement Agreement as business confidential information under 37 C.F.R.
`§ 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`According, it is
`ORDERED that the parties’ Joint Request to treat the Settlement
`Agreement as business confidential information under 37 C.F.R. § 42.74(c),
`to be kept separately, is granted in each of the captioned proceedings; and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate is
`granted in each of the captioned proceedings; the Petition in each of
`IPR2021-00396 and IPR2021-00397 is dismissed; and the captioned
`proceedings are terminated.
`
`3
`
`
`
`IPR2021-00396 (Patent 10,025,801 B2)
`IPR2021-00397 (Patent 7,885,981 B2)
`APPENDIX
`
`
`Proceeding
`
`IPR2021-00396 Paper 10
`IPR2021-00397 Paper 9
`
`Joint Motion Joint Request Settlement
`Agreement
`Ex. 2003
`Ex. 2003
`
`Paper 11
`Paper 10
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00396 (Patent 10,025,801 B2)
`IPR2021-00397 (Patent 7,885,981 B2)
`For PETITIONER:
`James Glass
`Richard Lowry
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`For PATENT OWNER:
`Ronald Abramson
`Ari Jaffess
`Mord Lewis
`LISTON ABRAMSON LLP
`Ron.abramson@listonabramson.com
`Ari.jaffess@listonabramson.com
`Michael.lewis@listonabramson.com
`
`
`
`5
`
`
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