`571.272.7822
`
`Paper18
`Entered: January 26, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE,INC.,
`Petitioner,
`
`V.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2020-01081
`Patent RE44,818 El
`
`Before DAVID C. McKONE, JOHN A. HUDALLA, and
`JOHN D. HAMANN,Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`DECISION
`SettlementPrior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`IPR2020-01081
`Patent RE44,818 El
`
`I.
`
`INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(collectively “the Parties”) filed an amended! joint motion to withdraw the
`Petition. Paper 17 (“Joint Motion”). In support ofthe Joint Motion,the
`
`Parties filed a copy of a written confidential settlement agreement.
`Exs. 1044, 1045 (collectively, “Settlement Agreement”). The Partiesalso
`filed an amendedjoint requestto treat the Settlement Agreement as business
`confidential information and to keep it separate from thefiles of the
`
`challenged patent. Paper 18 (“Joint Request”).
`
`II. DISCUSSION
`
`In the Joint Motion, the Parties state that they have resolved their
`disputes regarding the challenged patent, which include this proceeding and
`the related district court litigation. Joint Motion 1. The Parties state that the
`Settlement Agreementis “a true copy of any agreementor understanding...
`betweenPetitioner and Patent Uwner madein connection with, or in
`
`contemplation of, the withdrawalofthe Petition for the proceeding under
`37 CFR § 42.74(b) with this joint motion.” Jd. Accordingly, the Parties
`
`jointly request termination ofthis proceeding. Jd. at 2.
`
`| The Parties originally filed a joint motion (Paper 15) to withdraw the
`Petition and a joint request (Paper 16) to treat the settlement agreement
`(Ex. 1044) as business confidential information andto keep it separate from
`the files of the challenged patent. Having reviewedthe version of the
`settlement agreementfiled with those papers, we determinedthatit
`references a “Schedule 1” anda “Schedule 2,”but it did not include those
`schedules. On January 25, 2021, Judges McKone, Hudalla, and Hamann
`held a teleconference with counselfor the parties to discuss the missing
`schedules. The Parties susquently filed the amended papers (Papers17, 18)
`and the missing schedules (Ex. 1045).
`
`2
`
`
`
`IPR2020-01081
`Patent RE44,818 El
`
`There are strong public policy reasonsto favor settlement between
`
`the parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
`
`64,280 (Nov. 21, 2019). The proceedingis in its preliminary phase, and we
`
`have not yet decided whethertoinstitute a trial in the proceeding. In view of
`
`the early stage of the proceeding andthe settlement between the Parties, we
`
`determinethatit is appropriate to dismiss the petition and terminate the
`
`proceedingas to the Parties, without rendering a decision oninstitution ora
`
`final written decision.
`
`In the Joint Request,the Parties jointly request to treat the Settlement
`
`Agreementas business confidential information and to haveit be kept
`separate from thefiles of the challenged patent and associated proceeding.
`
`Joint Request1.
`
`After reviewing the Settlement Agreement betweenthe Parties, we
`
`find that the Settlement Agreementcontains confidential business
`
`information regarding the terms of settlement. We determine the Settlement
`Agreement (Exs. 1044, 1045) betweenthe Parties shall be treated as
`business confidential information under 37 C.F.R. § 42.74(c) and shall be
`
`kept separate from thefiles of the challenged patent and associated
`
`proceeding.
`
`This Order doesnot constitute a final written decision pursuantto
`
`35 U.S.C, § 318(a).
`
`Accordingly,it is:
`
`Ill. ORDER
`
`ORDEREDthat the amendedjoint motion to withdraw the Petition
`
`(Paper 17) is granted;
`
`
`
`IPR2020-01081
`Patent RE44,818 El
`
`FURTHER ORDEREDthatthe above-captioned proceedingis
`
`terminated andthepetition is dismissed; and
`
`FURTHER ORDEREDthat the amendedjoint request to treat the
`
`Settlement Agreementas business confidential information (Paper18) is
`granted, and the Settlement Agreement (Exs. 1044, 1045) shall remain
`designated as “Parties and Board Only” in the Board’s filing system,shall
`madeavailable only to Federal Governmentagencies on written request, or
`
`to any person on a showingof good cause, and shall be kept separate from
`the files of the involved patent and associated proceeding, pursuant to —
`
`37 CE.R. § 42.74(c).
`
`
`
`IPR2020-01081
`Patent RE44,818 El
`
`For PETITIONER:
`
`Katherine A. Vidal
`Michael A. Tomasulo
`Louis L. Campbell
`WINSTON & STRAWN LLP
`kvidal@winston.com
`mtomasulo@winston.com
`llcampbell@winston.com
`
`For PATENT OWNER:
`
`Byron L. Pickard
`Daniel S. Block
`Christopher O’Brien
`JamesR. Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-PTAR@sternekessler cam
`dblock-PTAB@sternekessler.com
`COBrien-PTAB@sternekessler.com
`JHietala(@sternekessler.com
`
`Russell J. Rigby
`INTELLECTUAL VENTURES
`rrigby@intven.com .
`
`
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