Trials@uspto.gov Paper 28
`571-272-7822 Entered: October 6, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS,
`Patent Owner.
`____________
`
`Case IPR2014-00057 (Patent 5,978,791)
`IPR2014-00058 (Patent 8,099,420)
`IPR2014-00059 (Patent 6,415,280)
`IPR2014-00062 (Patent 7,802,310)
`IPR2014-00066 (Patent 6,928,442)1
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses the same issue in the above-identified inter partes
`reviews. For efficiency, we enter one Order to be filed in all of the cases.
`The parties, however, may not use this style of filing in subsequent papers,
`without prior authorization.
`
`
`
`
`571-272-7822 Entered: October 6, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS,
`Patent Owner.
`____________
`
`Case IPR2014-00057 (Patent 5,978,791)
`IPR2014-00058 (Patent 8,099,420)
`IPR2014-00059 (Patent 6,415,280)
`IPR2014-00062 (Patent 7,802,310)
`IPR2014-00066 (Patent 6,928,442)1
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses the same issue in the above-identified inter partes
`reviews. For efficiency, we enter one Order to be filed in all of the cases.
`The parties, however, may not use this style of filing in subsequent papers,
`without prior authorization.
`
`
`
`
`
`IPR2014-00057 (Patent 5,978,791); IPR2014-00058 (Patent 8,099,420);
`IPR2014-00059 (Patent 6,415,280); IPR2014-00062 (Patent 7,802,310);
`IPR2014-00066 (Patent 6,928,442)
`
`
`
`Petitioners and Patent Owner jointly requested the conference call
`
`
`
`with the Board, seeking authorization to file a motion to terminate in each of
`
`the above-identified inter partes reviews. A conference call was held on
`
`October 6, 2014, between respective counsel for the parties and Judges
`
`Turner, Chang, and Zecher. As an initial matter, we notified the parties that
`
`the papers and exhibits2 filed on October 3, 2014, in the above-identified
`
`proceedings, have been expunged, because the parties did not seek or have
`
`prior authorization before filing the papers and exhibits.
`
`During the conference call, the parties indicated that they have settled
`
`their dispute, and reached a settlement agreement regarding the patents at
`
`issue. Generally, the Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
`
`settlement indicates that any agreement between the parties made in
`
`connection with, or in contemplation of, the termination of a proceeding
`
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on
`
`the facts before us, we authorize the parties to file a joint motion to terminate
`
`in each above-identified proceeding.
`
`According to 35 U.S.C. § 317(a), an inter partes review shall be
`
`terminated with respect to any petitioner upon the joint request of the
`
`petitioner and patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed. Nevertheless, we have
`
`
`2 IPR2014-00057, Paper 31, Ex. 1013; IPR2014-00058, Paper 26, Ex. 1013;
`IPR2014-00059, Paper 24, Ex. 1013; IPR2014-00062, Paper 27, Ex. 1025;
`IPR2014-00066, Paper 24, Ex. 1016.
`
`
`
`
`2
`
`
`
`IPR2014-00057 (Patent 5,978,791); IPR2014-00058 (Patent 8,099,420);
`IPR2014-00059 (Patent 6,415,280); IPR2014-00062 (Patent 7,802,310);
`IPR2014-00066 (Patent 6,928,442)
`
`
`the discretion to proceed to a final written decision, even if no petitioner
`
`
`
`remains in the inter partes review.
`
`As movants, the parties have the burden to show entitlement to the
`
`relief requested. 37 C.F.R. § 42.20(c). Each joint motion must include a
`
`sufficient explanation as to why termination is appropriate at such a late
`
`stage when Patent Owner already has filed its Response in the proceedings.
`
`The parties also are required to file a true copy of the parties’
`
`settlement agreement, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(b). A redacted version of the settlement agreement will not be
`
`accepted as a true copy of the settlement agreement.
`
`The parties may request that each settlement agreement be treated as
`
`business confidential information under 37 C.F.R. § 42.74(c). Such a
`
`request must be filed, as a separate paper, with the settlement agreement.
`
`The parties are directed to FAQ G2 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`
`their settlement agreement as confidential (e.g., uploading as “Parties and
`
`Board Only”).
`
`Accordingly, it is
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate in each above-identified proceeding; the joint motions are due no
`
`later than October 14, 2014;
`
`FURTHER ORDERED that the parties are required to file a true copy
`
`of the parties’ settlement agreement in connection with the termination of
`
`the proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(b);
`
`
`
`3
`
`
`
`IPR2014-00057 (Patent 5,978,791); IPR2014-00058 (Patent 8,099,420);
`IPR2014-00059 (Patent 6,415,280); IPR2014-00062 (Patent 7,802,310);
`IPR2014-00066 (Patent 6,928,442)
`
`
`
`FURTHER ORDERED that the parties may file a separate paper
`
`
`
`requesting that each settlement agreement be treated as business confidential
`
`information as specified in 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed, as an exhibit, electronically in the Patent Review Processing
`
`System (“PRPS”) in accordance with the instructions provided on the
`
`Board’s website (e.g., uploading as “Parties and Board Only”).
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`IPR2014-00057 (Patent 5,978,791); IPR2014-00058 (Patent 8,099,420);
`IPR2014-00059 (Patent 6,415,280); IPR2014-00062 (Patent 7,802,310);
`IPR2014-00066 (Patent 6,928,442)
`
`
`
`
`
`
`
`For PETITIONERS:
`
`
`David W. O’Brien
`J. Andrew Lowes
`John Russell Emerson
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andrew.lowes.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`
`Paul V. Storm
`GARDERE, WYNNE, SEWELL LLP
`pvstorm@gardere.com
`
`
`
`For PATENT OWNERS:
`
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`5
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