`571-272-7822
`
`
`Paper 28
`Entered: January 31, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT PACKARD ENTERPRISE CO.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`IPR2022-00096
`Patent RE44,818 E
`____________
`
`
`Before DAVID C. MCKONE, JOHN A. HUDALLA, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`IPR2022-00096
`Patent RE44,818 E
`
`
`I.
`
`INTRODUCTION
`
`Petitioner and Patent Owner (collectively “the Parties”) have
`
`requested termination of the above-identified inter partes review proceeding
`
`based on a settlement. On January 25, 2023, the Parties filed a Joint Motion
`
`to Terminate Proceeding (“Joint Motion”) in the above-identified
`
`proceeding. Paper 26. The Parties previously sought authorization to file
`
`the Joint Motion and received that authorization on January 23, 2023. Joint
`
`Motion 1. The Parties also filed a copy of a settlement agreement (Ex. 1033,
`
`“Settlement Agreement”) and a Joint Motion to File Agreement as Business
`
`Confidential Information (Paper 27, “Joint Request”) in the proceeding.
`
`II. DISCUSSION
`
`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.”
`
`Section 317(a) also states that if no petitioner remains in the inter partes
`
`review, the Office may terminate the review.
`
`In the Joint Motion, the Parties represent that they have reached an
`
`agreement to resolve all of their present disputes regarding Patent RE44,818,
`
`that the filed copy of the Settlement Agreement is a true and correct copy,
`
`and that “[t]here are no other agreements, oral or written, between the parties
`
`made in connection with, or in contemplation of, the termination of this
`
`proceeding.” Joint Motion 2–4.
`
`We instituted trial in the above-identified proceeding on May 11,
`
`2022. Paper 11. We have not yet decided the merits of the proceeding, and
`
`a final written decision has not been entered. Although this proceeding has
`
`
`
`2
`
`
`
`IPR2022-00096
`Patent RE44,818 E
`
`moved beyond the preliminary stage, the Parties have shown adequately that
`
`termination of the proceeding is appropriate. Under these circumstances, we
`
`determine that good cause exists to terminate the proceeding with respect to
`
`the Parties.
`
`The Parties also requested that the Settlement Agreement be treated as
`
`business confidential information and be kept separate from the file of Patent
`
`RE44,818. Joint Request 1. After reviewing the Settlement Agreement, we
`
`find that the Settlement Agreement 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 35 U.S.C. § 317(b) and 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
`
`Accordingly, for the reasons discussed above, it is
`
`ORDERED that the Joint Motion is granted and IPR2022-00096 is
`
`terminated with respect to Petitioner and Patent Owner, pursuant to
`
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`
`
`FURTHER ORDERED that the Joint Request is granted, and the
`
`Settlement Agreement shall be kept separate from the file of Patent
`
`RE44,818 and made available only to Federal Government agencies on
`
`written request, or to any person on a showing of good cause, pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2022-00096
`Patent RE44,818 E
`
`
`
`For PETITIONER:
`
`Heath Briggs
`Elana Araj
`Leif Olson
`briggsh@gtlaw.com
`araje@gtlaw.com
`olsonl@gtlaw.com
`
`
`
`
`
`For PATENT OWNER:
`
`Daniel Block
`Byron Pickard
`James Hietala
`Steven Pappas
`Todd Thurheimer
`Russell Rigby
`dblock-ptab@sternekessler.com
`bpickard-ptab@sternekessler.com
`jhietala-ptab@sternekessler.com
`spappas-ptab@sternekessler.com
`tthurheimer-ptab@sternekessler.com
`rrigby@intven.com
`
`
`
`
`
`
`
`4
`
`
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