`Tel: 571-272-7822
`
`
`
`
`
`Paper 21
`Date: November 23, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`VOCALIFE LLC,
`Patent Owner.
`_______________
`
`IPR2022-00005
`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
`
`
`
`
`
`
`IPR2022-00005
`Patent RE48,371 E
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a petition requesting inter partes
`review of claims 22–41 of U.S. Patent No. RE48,371 E (Ex. 1001, “the ’371
`patent”). Paper 1 (“Pet.”). Vocalife LLC (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). With our authorization
`(Paper 7), Petitioner filed a Reply. Paper 8 (“Prelim. Reply”). We also
`authorized Patent Owner to file a Sur-Reply of equal length, but no sur-reply
`was filed. Paper 7, 5. We granted institution on April 15, 2022. Paper 10.
`Through email, the Parties requested and the Board authorized “(1) a
`motion to terminate the proceeding, as a Paper, (2) a true copy of the written
`settlement agreement and any collateral agreement (including any licensing
`agreement) made in connection with the termination, as an Exhibit, and (3) a
`request to treat the written settlement agreement as business confidential
`under 37 CFR 42.74(c), as part of or as a separate Paper from the motion to
`terminate.” Ex. 3002. The Parties filed a Joint Motion to Terminate
`Pursuant to 35 U.S.C. § 317 on November 18, 2022. Paper 19 (“Motion”),
`and what they refer to as a true copy of “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”
`(Ex. 2006) and “a true copy of the written release agreement” between the
`parties (Ex. 2007). Motion 1. The Parties also filed a Joint Motion to Treat
`the Agreements as Business Confidential and to Keep Separate Pursuant to
`35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 20.
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “An inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`2
`
`
`
`IPR2022-00005
`Patent RE48,371 E
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” We
`entered Decision to Institute on April 15, 2022 (Paper 10), but we have not
`yet held an oral hearing or entered a Final Written Decision on the merits.
`“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.” See Consolidated Trial Practice Guide, 86 (Nov. 2019).1
`Because the Parties state the settlement agreement that they filed “resolves
`all pending disputes between the Parties relating to this proceeding” (Motion
`1) and we have not decided the merits, we determine that it is appropriate to
`terminate the proceeding without entering a Final Written Decision on the
`patentability of the challenged claims.
`The Parties also filed a joint motion that the agreements (Exs. 2006,
`2007) be treated as business confidential information and be kept separate
`from the file of the patent involved in this inter partes proceeding. Paper 20.
`After reviewing the agreements, we find that they contain confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the agreements as business confidential
`information pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2022-00005
`Patent RE48,371 E
`
`
`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 agreements
`as business confidential information is GRANTED, and the agreements
`(Exs. 2006, 2007) 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
`
`
`
`IPR2022-00005
`Patent RE48,371 E
`
`For PETITIONER:
`
`Erika Arner
`Daniel Tucker
`Mingji Jin
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`daniel.tucker@finnegan.com
`mingji.jin@finnegan.com
`
`
`For PATENT OWNER:
`
`Vincent J. Rubino, III
`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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