throbber
Trials@uspto. gov
`27571-272-7822
`
`Paper 26
`Entered: January 30, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`V.
`
`INTELLECTUAL VENTURES IT LLC,
`Patent Owner.
`
`IPR2021-01376 (Patent 8,725,132 B1)
`IPR2021-01377 (Patent 8,023,991 B2)
`IPR2021-01378 (Patent 6,816,464 B1)
`IPR2022-00211 (Patent 7,783,788 B1)!
`
`Before KEN B. BARRETT, NABEEL U. KHAN,and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`35 U.S.C. § 317, 37 CER. § 42.74
`
`' These cases have not beenjoined or consolidated. Rather, this Order
`addressesissues that are the same in the identified cases. We exercise our
`discretion to issue one orderto be filed in each case. The parties, however,
`are not authorizedto use this filing style in any subsequentpapers.
`
`

`

`IPR2021-01376 (Patent 8,725,132 B1)
`IPR2021-01377 (Patent 8,023,991 B2)
`IPR2021-01378 (Patent 6,816,464 B1)
`IPR2022-00211 (Patent 7,783,788 B1)
`
`We,in each of the above-captioned cases, instituted an interpartes
`
`review. /.g., IPR2021-01367, Paper 15. On January 25, 2023, with our
`
`authorization, the parties filed in each case a “Jomt Motion to Terminate
`
`Proceeding.” Paper 38? (“Mot. to Terminate”or “Motions to Terminate’’).
`
`Theparties represent in the Motions to Terminate that they havesettled their
`
`disputes as to the challenged patents. Mot. to Terminate 1. The Motionsto
`
`Terminate were accompanied by a document (Ex. 1043) that the parties
`
`represent to be a true and correct copy of the written settlement agreementin
`
`connection with the proceedings.
`
`/d. at3—4. The parties certify 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.”
`
`Id. at 4.
`
`Theparties also filed in each case, with our authorization, a “Joint
`
`Motion to File Agreement as Business Confidential Information Pursuant
`
`to 35 U.S.C. § 317” (Paper 39), requesting that the settlement agreement be
`
`treated a business confidential information and be kept separate from thefile
`
`of the respective patent, pursuant to 35 U.S.C. §317(b) and 37 C.F.R.
`
`§ 42.74(c).
`
`Theparties represent in each Motion to Terminate that “[t]he parties
`
`haveresolved their disputes regarding the [respective] patent and executed
`
`an agreement which contemplates requesting termination of this proceeding
`
`and terminating or dismissing the Parties’ related[district court]
`
`? Citations to the record refer to IPR2021-01376. Similar papers werefiled
`in each of the other proceedings.
`
`

`

`IPR2021-01376 (Patent 8,725,132 B1)
`IPR2021-01377 (Patent 8,023,991 B2)
`IPR2021-01378 (Patent 6,816,464 B1)
`IPR2022-00211 (Patent 7,783,788 B1)
`
`proceeding.” Mot. to Terminate 2. The parties also represent that they “do
`
`not anticipate any furtherlitigation between them concerning the
`
`[challenged] patent[s].” /d. at 1.
`
`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 37 C.F.R. § 42.72. We have not decided yet the merits of
`
`the proceedings, and final written decisions have not been entered. Under
`
`the circumstances presented here, we determinethatit is appropriate to
`
`terminate these proceedings with respect to both Petitioner and Patent
`
`Owner. Accordingly, we grant the parties’ Motions to Terminate the
`
`proceedings.
`
`Wealso determine that the parties have complied with the
`
`requirements of 37 C.F.R. §42.74(c) to have their settlement agreement
`
`treated as business confidential information and kept separate from the
`
`patentfiles of the challenged patents. Thus, we grant the parties’ joint
`
`motion to treat the settlement agreementas business confidential
`
`information.
`
`This Order doesnot constitute a final written decision pursuant to 35
`
`U.S.C. §318(a).
`
`Accordingly, it 1s
`
`ORDEREDthatthe “Joint Motion[s] to Terminate Proceeding[s]”are
`
`granted,
`
`FURTHER ORDEREDthatthese proceedings are terminated,
`
`

`

`IPR2021-01376 (Patent 8,725,132 B1)
`IPR2021-01377 (Patent 8,023,991 B2)
`IPR2021-01378 (Patent 6,816,464 B1)
`IPR2022-00211 (Patent 7,783,788 B1)
`
`FURTHER ORDEREDthatthe “Joint Motion[s] to File Agreement as
`
`Business Confidential Information Pursuant to 35 U.S.C. $317”are
`
`granted,
`
`FURTHER ORDEREDthat the parties’ settlement agreementis to be
`
`kept separate from the files of the involved U.S. Patent Nos. 8,725,132 B1,
`
`8,023,991 B2, 6,816,464 B1, and 7,783,788 B1 underthe provisions of 35
`
`U.S.C. §317(b) and 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDEREDthat“Petitioner’s Motion to Exclude”
`
`(Paper 31) in IPR2021-01376is dismissed as moot.
`
`

`

`IPR2021-01376 (Patent 8,725,132 B1)
`IPR2021-01377 (Patent 8,023,991 B2)
`IPR2021-01378 (Patent 6,816,464 B1)
`IPR2022-00211 (Patent 7,783,788 B1)
`
`For PETITIONER:
`
`Heath J. Briggs
`Elana Araj
`Leif Olson
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`araje@etlaw.com
`olsonl@gtlaw.com
`
`For PATENT OWNER:
`
`Daniel S. Block
`Byron L. Pickard
`James R. Hietala
`Steven M. Pappas
`Todd Thurheimmer
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dblock-ptab@sternekessler.com
`bpickard-ptab@sternekessler.com
`jhietala-ptab@sternekessler.com
`spappas-ptab@sternekessler.com
`tthurhemer-ptab@sternekessler.com
`
`Russell J. Rigby
`INTELLECTUAL VENTURES
`rrigby@intven.com
`
`

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