Trials@uspto.gov
`571-272-7822 Entered: October 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS,
`Patent Owners.
`____________
`
`Cases 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.
`
`JUDGMENT
`Termination of Proceeding after Institution
`37 C.F.R. § 42.73
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`1 This Judgment is entered in each of the above-identified proceedings.
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`
`
`

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`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)
`
`
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`On October 16, 2014, Petitioners Rackspace US, Inc. and Rackspace
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`Hosting, Inc. (collectively, “Rackspace”) and Patent Owner PersonalWeb
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`Technologies, LLC and Level 3 Communications (collectively,
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`PersonalWeb) filed a Joint Motion to Terminate in each of the above-
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`identified inter partes reviews (“the Rackspace inter partes reviews”).
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`Paper 34, “Mot.”2 The parties also filed a true copy of their Written
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`Settlement Agreement, made in connection with the termination of the
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`Rackspace inter partes reviews, in accordance with 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(b). Ex. 1014. Additionally, the parties submitted a Joint
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`Request to have their Written Settlement Agreement treated as confidential
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`business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Paper 33. For the reasons set forth below, the Joint Motions to Terminate
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`and the Requests to have their Written Settlement Agreement treated as
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`confidential business information are granted.
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`The Rackspace inter partes reviews were instituted on April 15, 2014.
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`Paper 9. After institution, PersonalWeb filed a Patent Owner Response in
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`each review. Paper 24. However, Rackspace has not filed a Reply to the
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`Patent Owner Response. Nor has a Final Hearing been held.
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`In their Joint Motions to Terminate, the parties urge us to terminate
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`the Rackspace inter partes reviews with respect to both parties, because the
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`record in each review is incomplete and we have not yet decided the merits
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`of each review. Mot. 2. The parties also argue that proceeding to a Final
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`2 For the purpose of clarity and expediency, we treat IPR2014-00057 as
`representative, and all citations are to IPR2014-00057 unless otherwise
`noted.
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`
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`2
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`

`
`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)
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`
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`Written Decision would not be appropriate in light of the facts before us. Id.
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`at 2–3.
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`In particular, the parties note that, because Rackspace has not filed a
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`Reply or Reply declarations, Rackspace has not addressed the arguments and
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`evidence from the Patent Owner Response. Id. at 2. PersonalWeb also has
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`not yet deposed any reply witnesses and has not yet filed a Motion for
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`Observations on Cross-examination. Id. Neither party has filed, or
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`responded to, a Motion to Exclude Evidence. Id. Rackspace informs us that
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`it will no longer participate in the Rackspace inter partes reviews in any
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`respect before the Board. Id. at 4. Specifically, it will not file a Reply, will
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`not attend any oral hearing, and will not oppose any Motions to Exclude
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`Evidence. Id. In fact, Rackspace did not file a Reply to the Patent Owner
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`Response within the required time period—before or on Due Date 2,
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`October 17, 2014 (Paper 30).
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`The parties identify other related inter partes reviews and district
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`court proceedings involving PersonalWeb and third parties. Mot. 6–7.
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`However, except for EMC Corporation and VMWare, Inc. (collectively
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`“EMC”) and Apple, Inc. (“Apple”), none of the third parties elected to file a
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`Petition for inter partes review within the one-year statutory period under 35
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`U.S.C. § 315(b). Id. at 7. We note that the termination of the Rackspace
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`inter partes reviews would not affect the inter partes reviews that involve
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`EMC and Apple. We are cognizant that Google, Inc. and YouTube, LLC
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`(collectively “Google”) filed four Petitions—IPR2014-00977, IPR2014-
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`00978, IPR2014-00979, and IPR2014-00980—and Motions for Joinder with
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`four of the Rackspace inter partes reviews. See, e.g., IPR2014-00977, Paper
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`
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`3
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`

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`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)
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`
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`3. However, Google’s Petitions were not filed timely in accordance with
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`35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the
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`petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner . . . is served with a complaint alleging infringement of
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`the patent.”).3 Google could have, but did not, file a petition for inter partes
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`review with the one-year time period. More significantly, Google’s Motions
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`for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b)
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`(“[a]ny request for joinder must be filed, as a motion under § 42.22, no later
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`than one month after the institution date of any inter partes review for which
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`joinder is requested.”).4 Google fails to provide sufficient reasons as to why
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`we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the
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`one-month time limit for filing a Motion for Joinder.5
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`The parties further argue that maintaining the Rackspace inter partes
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`reviews, after the parties have settled their disputes, would be contrary to
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`public policy and would discourage future settlements by removing a
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`significant motivation for settlement. Mot. 5. In view of the circumstances,
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`we agree. Indeed, there are strong public policy reasons to favor settlement
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`between the parties to a proceeding. Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Generally, the Board expects that
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`3 Google filed its Petitions on June 8, 2014, which is more than a year after
`Google was served with a complaint alleging infringement of PersonalWeb’s
`patents on December 12, 2011. See, e.g., IPR2014-00977, Ex. 2001, Pet. 3.
`4 Rackspace inter partes reviews were instituted on April 15, 2014. Paper 9.
`Google, however, did not file its Motions for Joinder until June 8, 2014.
`See, e.g., IPR2014-00977, Paper 3.
`5 We will issue decisions on the Motions for Joinder in due course.
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`
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`4
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`

`
`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)
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`
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`a proceeding will terminate after the filing of a settlement agreement, unless
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`the Board already has decided the merits of the proceedings. Id.
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`In their Joint Motions to Terminate, the parties indicate that they have
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`settled all of their disputes involving the Rackspace inter partes reviews, as
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`well as the related district court proceeding styled PersonalWeb Tech. LLC
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`v. Rackspace US, Inc., No. 6-12-cv-00659 (E.D. Tex.). Mot. 1, 4. The
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`parties also indicate that they concurrently filed their Stipulation of
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`Dismissal, as to only the Rackspace Defendants with prejudice, in that
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`related district court proceeding. Id.; Ex. 2019. More importantly, the
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`parties expressly state that “no other disputes between the parties remain,”
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`and “[t]here is no other litigation or dispute in any court or forum involving
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`[Rackspace and PersonalWeb].” Id. at 4.
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`Upon consideration of the facts before us, we determine that it is
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`appropriate to terminate the Rackspace inter partes reviews as to both
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`parties, and enter judgment.
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`For the foregoing reasons, it is:
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`ORDERED that the Joint Motions to Terminate the Rackspace inter
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`partes reviews are granted;
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`FURTHER ORDERED that the Rackspace inter partes reviews are
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`terminated as to all parties; and
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`FURTHER ORDERED that the parties’ Joint Request that their
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`Written Settlement Agreement be treated as business confidential
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`information kept separate from the patent file, and made available only to
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`Federal Government agencies on written request, or to any person on a
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`
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`5
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`

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`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)
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`
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`showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c), is granted.
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`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
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`
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`For PATENT OWNERS:
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`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
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`6