`571-272-7822
`
`Paper 20
`Date: April 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOYOTA MOTOR CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, FREDERICK C. LANEY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317, 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`
`We previously instituted inter partes review proceedings with respect
`
`to the challenged claims of U.S. Patent Nos. 9,291,475 B2, 9,602,608 B2,
`
`9,232,158 B2, 7,484,008 B2, 6,832,283 B2, and 7,382,771 B2 (“the subject
`
`patents”). IPR2022-00708, Paper 12; IPR2022-00709, Paper 11; IPR2022-
`
`00710, Paper 13; IPR2022-00857, Paper 8; IPR2022-00970, Paper 10;
`
`IPR2022-00971, Paper 12. On March 27, 2023, with our authorization,
`
`Petitioner Toyota Motor Corporation and Patent Owner Intellectual Ventures
`
`II LLC (collectively, “the Parties”) filed joint motions to terminate the
`
`proceedings pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. IPR2022-
`
`00708, Paper 23 (“708 Motion”); IPR2022-00709, Paper 21; IPR2022-
`
`00710, Paper 15; IPR2022-00857, Paper 15; IPR2022-00970, Paper 21;
`
`IPR2022-00971, Paper 18.
`
`The Parties represent in the joint motions that litigation between them
`
`involving the subject patents, previously pending in the United States
`
`District Court for the Eastern District of Texas, was “dismissed pursuant to
`
`Court Order dated March 20, 2023 [Dkt. No. 159] on joint motion of the
`
`parties” after the Parties reached an agreement resolving their disputes. See,
`
`e.g., 708 Mot. 1–2. The parties contend that termination is appropriate
`
`because the Board has not yet decided the merits of the proceedings and
`
`termination would preserve significant resources for the Parties and the
`
`Board, pointing out, among other considerations, that these proceedings
`
`remain “far from final disposition” because there still remains substantial
`
`briefing on a myriad of issues by the Parties, oral arguments for all of the
`
`proceeding are not scheduled to take place for several more months, and the
`
`2
`
`
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`statutory deadlines for the Final Written Decisions are even further away.
`
`Id. at 5.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the joint
`
`motions each were accompanied by a copy of a settlement agreement that
`
`the Parties represent to be a true and correct copy of the written settlement
`
`agreement that resolves the disputes between them in these proceedings.
`
`IPR2022-00708, Ex. 2027; IPR2022-00709, Ex. 2032; IPR2022-00710, Ex.
`
`2006; IPR2022-00857, Ex. 2003; IPR2022-00970, Ex. 2006; IPR2022-
`
`00971, Ex. 2005. The Parties further represent that there are no other
`
`agreements, oral or written, between them made in connection with, or in
`
`contemplation of, the termination of the proceedings. See, e.g., 708 Mot. 2.
`
`The Board generally expects that a case “will terminate after the filing
`
`of a settlement agreement, unless the Board has already decided the merits.”
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov.
`
`2019), available at https://www.uspto.gov/sites/default/files/documents/
`
`tpgnov.pdf; see also 37 C.F.R. § 42.72 (“The Board may terminate a trial
`
`without rendering a final written decision, where appropriate, . . . .”). As
`
`noted by the Parties, these proceedings are at an early stage, oral hearing has
`
`not yet been held, and the Board has not yet decided the merits of the
`
`proceedings. See, e.g., 708 Mot. 5; IPR2022-00708, Paper 13 (Scheduling
`
`Order). Under the circumstances presented here, and in view of the Parties’
`
`representations, we determine that it is appropriate to terminate these
`
`proceedings with respect to all parties, and we, accordingly, grant the
`
`Parties’ joint motions to terminate.
`
`3
`
`
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`
`In a separate paper, the Parties also jointly request that the Board treat
`
`as business confidential information and keep separate from the file of the
`
`involved patents, the true and complete copy of the settlement agreement,
`
`which is referenced in the Parties’ Joint Motion to Terminate in each of the
`
`proceedings. IPR2022-00708, Paper 24 (“Settlement Agreement”);
`
`IPR2022-00709, Paper 22; IPR2022-00710, Paper 16; IPR2022-00857,
`
`Paper 16; IPR2022-00970, Paper 22; IPR2022-00971, Paper 19. After
`
`reviewing the Parties’ Settlement Agreement, we find that the settlement
`
`agreement contains confidential business information regarding the terms of
`
`settlement, and we determine that good cause exists to treat the settlement
`
`agreement as business confidential information. See 37 C.F.R. § 42.74(c).
`
`However, we deny the portion of the Settlement Agreement seeking
`
`that “the Board order 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, that any such written request be served upon the parties on the
`
`day the written request is provided to the Board.” Settlement Agreement
`
`1–2. We have no such procedure to serve upon the Parties a request for
`
`access to the Settlement Agreement, and, further, our regulations do not
`
`require us to do so.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`
`Accordingly, it is
`
`ORDERED that the joint motions to terminate are GRANTED; and
`
`FURTHER ORDERED that Cases IPR2022-00708, IPR2022-00709,
`
`IPR2022-00710, IPR2022-00857, IPR2022-00970, and IPR2022-00971 are
`
`hereby terminated.
`
`
`
`FURTHER ORDERED that the filed settlement agreement (IPR2022-
`
`00708, Ex. 2027; IPR2022-00709, Ex. 2032; IPR2022-00710, Ex. 2006;
`
`IPR2022-00857, Ex. 2003; IPR2022-00970, Ex. 2006; IPR2022-00971, Ex.
`
`2005) be treated as business confidential information pursuant to 37 C.F.R.
`
`§ 42.74(c) and also remain designated as available only to “Parties and
`
`Board” in the Board’s E2E system.
`
`
`
`5
`
`
`
`IPR2022-00708 (Patent 9,291,475 B2)
`IPR2022-00709 (Patent 9,602,608 B2)
`IPR2022-00710 (Patent 9,232,158 B2)
`IPR2022-00857 (Patent 7,484,008 B2)
`IPR2022-00970 (Patent 6,832,283 B2)
`IPR2022-00971 (Patent 7,382,771 B2)
`
`FOR PETITIONER:
`David Reese
`James Barney
`Aidan Skoyles
`Tyler Akagi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`david.reese@finnegan.com
`james.barney@finnegan.com
`aidan.skoyles@finnegan.com
`tyler.akagi@finnegan.com
`
`
`FOR PATENT OWNER:
`Ryan W. O’Donnell
`Michael F. Snyder
`Jeffrey G. Glabicki
`Dawn C. Kerner
`VOLPE KOENIG
`RODonnell@vklaw.com
`MSnyder@vklaw.com
`JGlabicki@vklaw.com
`DKerner@vklaw.com
`
`Russell J. Rigby
`INTELLECTUAL VENTURES II LLC
`RRigby@intven.com
`
`6
`
`