`571-272-7822
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`Paper 38
`Date: April 16, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`Patent 7,987,274 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C.
`SIU, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
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`
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`DECISION
`Joint Motion to Terminate
`37 C.F.R. § 42.72
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`
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`
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`1 Case IPR2014-00484 has been joined with this case. Going forward, the
`caption will be changed to reflect that Microsoft is no longer a party to the
`proceeding.
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`
`
`IPR2014-00404
`Patent 7,987,274 B2
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`
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`Patent Owner and Microsoft filed a joint motion to terminate the trial
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`proceedings as to a subset of Petitioner under 35 U.S.C. § 317(a). Paper 28.
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`Along with the motion to terminate, Patent Owner and Microsoft filed a joint
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`request to treat the settlement agreements as business confidential
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`information under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c) (Papers 29 and
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`30) and filed copies of documents they described as the written settlement
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`agreements (Exhibit 2044).
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.”
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`Generally, Patent Owner and Microsoft state that termination with respect to
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`Microsoft is appropriate as the Board has not decided the merits of the
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`proceeding and as Microsoft will no longer be participating as a party in the
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`proceeding. As we have not yet decided the merits of the proceeding, we
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`hold that it is appropriate to terminate this proceeding with respect to
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`Microsoft. Additionally, we grant Patent Owner and Microsoft’s request to
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`treat the settlement agreement as business confidential information.
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`
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`Accordingly, it is:
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`ORDER
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`ORDERED that the joint motion to terminate the involvement of the
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`Microsoft is granted;
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`FURTHER ORDERED that, going forward, Microsoft shall no longer
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`be listed on the caption;
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`2
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`
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`IPR2014-00404
`Patent 7,987,274 B2
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`
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`FURTHER ORDERED that the joint request that the settlement
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`
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`agreement (Exhibit 2044) be treated as business confidential information,
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`kept separate from the file of the involved patent, 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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`showing of good cause, under the provisions of 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c), is granted.
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`
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`Petitioner:
`
`Walter Renner
`axf@fr.com
`
`Jeffrey Kushan
`jkushan@sidley.com
`
`Kevin Greene
`IPR38868-0003IP2@fr.com
`
`Joseph Micallef
`jmicallef@sidley.com
`
`
`Patent Owner:
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Jason Stach
`jason.stach@finnegan.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
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`3
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