Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 27
`Date: November 16, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`VOCALIFE LLC,
`Patent Owner.
`_______________
`
`IPR2021-01331
`Patent RE48,371 E
`________________
`
`
`
`Before MONICA S. ULLAGADDI, AMBER L. HAGY, and
`JASON M. REPKO, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 27
`Date: November 16, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`VOCALIFE LLC,
`Patent Owner.
`_______________
`
`IPR2021-01331
`Patent RE48,371 E
`________________
`
`
`
`Before MONICA S. ULLAGADDI, AMBER L. HAGY, and
`JASON M. REPKO, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`IPR2021-01331
`Patent RE48,371 E
`
`INTRODUCTION
`I.
`By way of a Petition accorded a filing date of July 30, 2021 (see Paper
`3, mailed August 12, 2021), Petitioner Amazon.com LLC (“Petitioner”)
`requested an inter partes review of claims 22–41 of U.S. Patent No.
`RE48,371 (Ex. 1001, “the ’371 patent”). Paper 1 (“Pet.”). Patent Owner
`Vocalife LLC (“Patent Owner”) filed a Preliminary Response to the Petition
`on November 12, 2021. Paper 6 (“Prelim. Resp.”). With authorization from
`the Board, Petitioner filed a Reply to Patent Owner’s Preliminary Response
`(Paper 7, “Reply”), and Patent Owner filed a Sur-reply to Petitioner’s Reply
`(Paper 8, “Sur-reply”). We issued a decision instituting review on January
`31, 2022. Paper 11.
`Pursuant to Board authorization, Patent Owner and Petitioner filed a
`Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 on November 8,
`2022. Paper 25. Along with the motion, the parties filed a copy of a
`document they describe as a settlement agreement. Paper 25, 1–2; Ex. 2011.
`The parties also filed a Joint Motion to Treat Settlement Agreement as
`Business Confidential and to Keep Separate Pursuant to 35 U.S.C. § 317 and
`37 C.F.R. § 42.74. Paper 26.
`II. DISCUSSION
`The Parties state the following in the Joint Motion to Terminate:
`Patent Owner has executed a confidential agreement with a
`third-party that resolves all pending disputes between the
`Parties, including all disputes relating to this proceeding and the
`related district court action, Vocalife LLC v. Amazon.com, Inc.
`and Amazon.com Services, Inc., Case No. 2-20-cv-00401-JRG-
`RSP (E.D. Tex.). As per the agreement, Patent Owner has filed
`a motion to dismiss, with prejudice, the related district court
`action. See Vocalife LLC v. Amazon.com, Inc. and Amazon.com
`Services, Inc., Case No. 2-20- cv-00401-JRG-RSP, Dkt. 71
`
`2
`
`
`
`IPR2021-01331
`Patent RE48,371 E
`(E.D. Tex., Nov. 8, 2022). Because the agreement resolves all
`disputes between the Parties and Vocalife has filed a motion to
`dismiss the district court action with prejudice, the Parties
`jointly request that the Board terminate this IPR proceeding
`Paper 25, 1.
`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 patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.”
`Although a Decision to Institute was entered on January 31, 2022 (Paper
`11), we have not yet held an oral hearing, and we have not entered a Final
`Written Decision on the merits.
`When, as here, we have not entered a Final Written Decision on the
`merits, we generally expect that trial will terminate after the filing of a
`settlement agreement. See Consolidated Trial Practice Guide, 86 (Nov.
`2019).1 As the parties have filed a written settlement agreement that they
`state “resolves all disputes between the Parties” as to this proceeding, and a
`stipulation of dismissal has been filed in the co-pending district court case as
`part of the settlement, we determine that it is appropriate to terminate trial
`without entering a Final Written Decision as to the patentability of claims
`22–41 of the ’371 patent.
`The Parties also filed a joint motion that the settlement agreement be
`treated as business confidential information and be kept separate from the
`file of the patent involved in this inter partes proceeding. Paper 26. After
`reviewing the settlement agreement, we find that the settlement agreement
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2021-01331
`Patent RE48,371 E
`contains confidential business information regarding the terms of settlement.
`We determine that good cause exists to treat the settlement agreement as
`business confidential information pursuant to 37 C.F.R. § 42.74(c).
`
`III. ORDER
`
`It is
`ORDERED that the Joint Motion to Terminate trial is GRANTED,
`and this trial is hereby terminated; and
`FURTHER ORDERED that the joint request to treat the settlement
`agreement as business confidential information is GRANTED, and the
`settlement agreement (Exhibit 2011) shall be treated as business
`confidential information under 37 C.F.R. § 42.74(c), kept separate from
`the file of U.S. Patent RE48,371 E, and remain designated as “Board and
`Parties Only.”
`
`
`4
`
`
`
`IPR2021-01331
`Patent RE48,371 E
`
`For PETITIONER:
`
`Colin Heideman
`Joseph Re
`Joshua Stowell
`Jeremy Anapol
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cbh@knobbe.com
`2jrr@knobbe.com
`2jys@knobbe.com
`2jaa@knobbe.com
`
`
`For PATENT OWNER:
`
`Vincent Rubino
`Peter Lambrianakos
`Enrique W. Iturralde
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianako@fabricantllp.com
`eiturralde@fabricantllp.com
`
`Jialin Zhong
`ZHONG LAW, LLC
`zhong@zhong-law.com
`
`5
`
`
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