UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`ServiceNow, Inc.,
`Petitioner
`
`v.
`
`BMC Software, Inc.,
`Patent Owner
`
`___________________
`
`Case CBM2015-00170
`Patent 6,646,093
`___________________
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SETTLEMENT AGREEMENT SEPARATE AND
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`ServiceNow, Inc.,
`Petitioner
`
`v.
`
`BMC Software, Inc.,
`Patent Owner
`
`___________________
`
`Case CBM2015-00170
`Patent 6,646,093
`___________________
`
`JOINT MOTION TO TERMINATE WITH
`REQUEST TO KEEP SETTLEMENT AGREEMENT SEPARATE AND
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF REQUESTED RELIEF
`
`On April 15, 2016, the Board authorized the parties to jointly file Motions to
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`CBM2015-00170
`
`Terminate several proceedings pending between Petitioner ServiceNow, Inc.
`
`(“ServiceNow”) and Patent Owner BMC Software, Inc. (“BMC Software”) in an e-
`
`mail communication responsive to Patent Owner’s Request for a Conference Call.
`
`The Board instructed the parties to (1) include a brief explanation as to why
`
`termination is appropriate; (2) identify all defendants in any related district court
`
`litigation involving the challenged patents; and (3) discuss the current status of
`
`each such related litigation with respect to each party to the litigation.
`
`Accordingly, ServiceNow and BMC Software jointly move to terminate the
`
`above-captioned proceeding pursuant to 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72
`
`in view of the parties’ agreement to settle their disputes. Accompanying this
`
`Motion is a copy of the confidential settlement agreement that settled the claims of
`
`three lawsuits between the parties. The parties jointly request that the confidential
`
`agreement be kept separate and treated as business confidential information
`
`pursuant to 37 CFR § 42.74(c). As explained below, the parties respectfully
`
`submit that there is good cause for granting their motion to terminate and their
`
`request to keep the confidential settlement agreement separate and treated as
`
`business confidential information.
`
`1
`
`
`
`
`
`II. BACKGROUND AND RELEVANT FACTS
`On August 10, 2015, Petitioner ServiceNow filed a petition requesting
`
`CBM2015-00170
`
`covered business method review of U.S. Patent No. 6,646,093 (the “Petition”).
`
`Patent Owner BMC Software filed a preliminary response on November 17, 2015.
`
`The Board issued its decision granting the petition on February 16, 2016.
`
`On March 8, 2016, the parties agreed to settle their respective claims against
`
`each other (in three separate cases) in a Confidential Settlement Agreement (“the
`
`Confidential Agreement”) executed by the parties. In accordance with 35 U.S.C. §
`
`327(b) and 37 C.F.R. § 42.74(b), a true copy of the Confidential Agreement is
`
`submitted herewith as Exhibit 2004. Pursuant to 37 CFR § 42.74(c), the parties
`
`jointly request that the Confidential Agreement filed as Exhibit 2004 be treated as
`
`business confidential information and kept separate from the files of the subject
`
`patent.
`
`Pursuant to the terms of the Confidential Agreement settling the three cases,
`
`the parties have moved to dismiss all pending matters between them in the
`
`appropriate jurisdictions, including the pending CBM and IPR proceedings before
`
`the Patent Trial and Appeal Board that are the subject of this and simultaneously
`
`filed joint motions to terminate.
`
`The aforementioned dismissed matters are listed below:
`
`2
`
`
`
`
`
`
`CBM2015-00170
`
`• BMC Software, Inc. v. ServiceNow, Inc., Case No. 2:14-CV-903-JRG
`
`(Eastern District of Texas);
`
`• BMC Software, Inc. v. ServiceNow, Inc., Case No. 2:16-CV-132-JRG
`
`(Eastern District of Texas); and
`
`• BMC Software, Inc. v. ServiceNow, Inc., EP 807 Landgericht
`
`Düsseldorf.
`
`BMC Software and ServiceNow are the only parties to the aforementioned
`
`litigation matters. There are no other defendants and there is no other litigation
`
`involving the challenged patent.
`
`As authorized by the Board, the parties are also filing Motions to Terminate
`
`the remaining IPR proceedings listed below:
`
`• Inter Partes Review of Patent No. 5,978,594 filed by ServiceNow,
`
`Inc., IPR2015-01176 (U.S. PTO);
`
`• Inter Partes Review of Patent No. 7,617,073 filed by ServiceNow,
`
`Inc., IPR2015-01211 (U.S. PTO); and
`
`• Inter Partes Review of Patent No. 8,674,992 filed by ServiceNow,
`
`Inc., IPR2015-01631 (U.S. PTO).
`
`3
`
`
`
`
`
`III. WHY TERMINATION IS APPROPRIATE
`ServiceNow withdraws from and will not participate further in this Review.
`
`CBM2015-00170
`
`The parties have resolved their pending disputes and have agreed to refrain, to the
`
`extent permitted by law, from further participation in this proceeding and the other
`
`IPR proceedings identified above. Accordingly, Service Now and BMC Software
`
`jointly request that the Board terminate this Review in its entirety.
`
`Termination of this Review is warranted. Both Congress and federal courts
`
`have expressed a strong interest in encouraging settlement in litigation. See, e.g.,
`
`Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
`
`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
`
`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
`
`cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
`
`particularly strong emphasis on settlement. For example, it endorses the ability of
`
`parties to agree to never challenge validity as part of a settlement. See Flex-Foot,
`
`Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001); see also Cheyenne River
`
`Sioux Tribe v. United States., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the
`
`law favors settlement to reduce antagonism and hostility between parties).
`
`Maintaining this Review after ServiceNow’s settlement with BMC Software
`
`would discourage future settlements by removing a primary motivation for
`
`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
`4
`
`
`
`
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`the pending proceedings between them. For patent owners, litigation risks include
`
`CBM2015-00170
`
`the potential for their patents to be invalidated. If a patent owner knows that a
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`covered business method review is likely to continue regardless of settlement, it
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`can create a strong disincentive for the patent owner to settle.
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`Additionally, it would not be appropriate for the Board to proceed to a final
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`written decision under section 328(a) in this case. This proceeding is in its earliest
`
`post-institution stages, and the Patent Owner has not yet filed a Patent Owner’s
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`Response. The record lacks a substantive submission from the Patent Owner,
`
`which renders it unripe for a final written decision and, for the aforementioned
`
`reasons; ServiceNow and BMC Software jointly request termination of this
`
`Review.
`
`IV. REQUEST TO TREAT SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION
`
`Patent Owner BMC Software and Petitioner ServiceNow hereby request that
`
`the Confidential Settlement Agreement (Exhibit 2004) be treated as business
`
`confidential information, be kept separate from the file of this Review, and be
`
`made available only to Federal Government agencies on written request or to any
`
`person on a showing of good cause pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. §
`
`42.74(c). The parties’ request is consistent with the standards set forth in 35 U.S.C.
`
`§ 327 that govern settlement of instituted reviews.
`
`5
`
`
`
`
`
`V. CONCLUSION
`Because the parties have demonstrated that good cause exists for granting
`
`CBM2015-00170
`
`this Motion, the parties respectfully request that the Board grant this Motion to
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`Terminate with Request to Keep the Confidential Settlement Agreement Separate
`
`and treated as Confidential Business Information.
`
`Respectfully submitted,
`
`By /Heidi L. Keefe/
`Counsel for Petitioner
`Registration No. 40,673
`Tel: 650-843-5001
`Fax: 650-849-7400
`hkeefe@cooley.com
`COOLEY LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
`
`6
`
`
`Date: April 26, 2016
`
`
`
`By /Robert A. Auchter/
`Counsel for Patent Owner
`Registration No. 38,069
`Tel: 202-370-8303
`Fax: 202-370-8344
`rauchter@mckoolsmith.com
`McKool Smith, P.C.
`1999 K Street, NW
`Suite 600
`Washington, DC 20006
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of JOINT MOTION TO
`TERMINATE WITH REQUEST TO KEEP SETTLEMENT AGREEMENT
`SEPARATE AND TREATED AS BUSINESS CONFIDENTIAL
`INFORMATION has been served on Petitioner via electronic mail at the
`following correspondence address:
`
`
`Heidi L. Keefe
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`Phillip Morton
`pmorton@cooley.com
`Andrew Mace
`amace@cooley.com
`Mark Weinstein
`mweinstein@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Respectfully submitted,
`
`
`
`
` By: /Robert A. Auchter/
`
`Robert A. Auchter (Reg. No. 38,069)
`
`
`
`Date: April 26, 2016
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