`571-272-7822
`
`
`Paper 8
`Entered: February 7, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`v.
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2023-00021
`Patent 7,382,771 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, FREDERICK C. LANEY, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`DANIELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2023-00021
`Patent 7,382,771 B2
`
`
`With our authorization, the parties filed a Joint Motion to Terminate
`Proceeding. Paper 6. The parties assert that they “have resolved their
`dispute and jointly request termination of IPR2023-00021 under 35 U.S.C.
`§ 317(a).” Id. at 1. The parties represent that, as a result of the parties’
`resolution of their dispute, they also are filing a motion to dismiss the co-
`pending lawsuit related to U.S. Patent No. 7,382,771 B2 (“the ’771 Patent”),
`which is the patent at issue in this proceeding. Id. at 3. The parties also
`represent that “[a] true copy of the document resolving the disputes related
`to the ‘771 Patent is filed concurrently herewith,” which was filed as Exhibit
`2001. Id. at 4. We have reviewed that “Resolution Document,” which
`indicates that it is the entire agreement between the parties.
`In a separate paper, the parties also jointly request that the Board
`“treat the [Resolution Document] resolving the proceeding . . . as business
`confidential information” and “that the confidential Resolution Document be
`kept separate from the file of the subject patent in the captioned proceeding
`and be made available only to Federal Government agencies on written
`request or to persons showing good cause.” Paper 7, 1.
`The Board has not yet entered a decision on institution of a trial, and
`we determine that good cause exists to dismiss the Petition (Paper 2) and to
`terminate the preliminary proceeding. See 37 C.F.R. § 42.74. After
`reviewing the parties’ Resolution Document, we find that the agreement
`contains confidential business information regarding the terms of settlement,
`and we determine that good cause exists to treat the Resolution Document as
`business confidential information.
`
`It is
`
`2
`
`
`
`IPR2023-00021
`Patent 7,382,771 B2
`
`
`ORDERED that the Joint Motion to Terminate Proceeding is granted;
`FURTHER ORDERED that the Petition (Paper 2) is dismissed and the
`preliminary proceeding is terminated; and
`FURTHER ORDERED that the filed confidential Resolution
`Document (Ex. 2001) 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.
`
`3
`
`
`
`IPR2023-00021
`Patent 7,382,771 B2
`
`FOR PETITIONER:
`
`Reza Dokhanchy
`Adam R. Alper
`Akshay S. Deoras
`Michael W. De Vries
`KIRKLAND & ELLIS LLP
`reza.dokhanchy@kirkland.com
`adam.alper@kirkland.com
`akshay.deoras@kirkland.com
`michael.devries@kirkland.com
`
`
`FOR PATENT OWNER:
`
`Daniel H. Golub
`Michael F. Snyder
`Jeffrey G. Glabicki
`Robert D. Leonard
`Dawn C. Kerner
`Ryan W. O’Donnell
`VOLPE KOENIG
`DGolub@vklaw.com
`MSnyder@vklaw.com
`JGlabicki@vklaw.com
`RLeonard@vklaw.com
`DKerner@vklaw.com
`RODonnell@vklaw.com
`
`Russell J. Rigby
`INTELLECTUAL VENTURES
`RRigby@intven.com
`
`4
`
`
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