throbber
Trials@uspto.gov
`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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket