`571-272-7822 Entered: September 9, 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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`INTEL CORPORATION,
`Petitioner,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
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`Case IPR2014-00443
`Patent 7,147,759 B21
`____________
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`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`1 This Order addresses the same issue in the inter partes reviews identified
`in the Appendix of this Order. For efficiency, we file this Order in this case
`as representative. The parties, however, are not authorized to use this style
`of filing in subsequent papers.
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`IPR2014-00443
`Patent 7,147,759 B2
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`Petitioner, Intel Corporation, and Patent Owner, Zond, LLC, jointly
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`requested the conference call with the Board, seeking authorization to file a
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`motion to terminate in each of the inter partes reviews identified in the
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`Appendix of this Order. Those proceedings involve the following patents:
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`U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759 B2,
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`7,604,716 B2, 7,808,184 B2, and 7,811,421 B2.
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`A conference call was held on September 8, 2014, between respective
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`counsel for the parties and Judges Turner, Stephens, Chang, Mitchell, and
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`Meyer. During the conference call, the parties indicated that they have
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`settled their dispute, and reached a settlement agreement regarding the
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`above-identified patents.
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`Generally, the Board expects that a proceeding will terminate after the
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`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
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`settlement indicates that any agreement between the parties made in
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`connection with, or in contemplation of, the termination of a proceeding
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`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on
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`the facts before us, we authorize the parties to file a joint motion to terminate
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`in each proceeding identified in the Appendix.
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`Each joint motion must include a brief explanation as to why
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`termination is appropriate in the proceeding. The parties also are required to
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`file a true copy of the parties’ settlement agreement, in accordance with 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). A redacted version of the
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`settlement agreement will not be accepted as a true copy of the settlement
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`agreement.
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`2
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`IPR2014-00443
`Patent 7,147,759 B2
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`The parties may request that each settlement agreement be treated as
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`business confidential information under 37 C.F.R. § 42.74(c). Such a
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`request must be filed, as a separate paper, with the settlement agreement.
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`The parties are directed to FAQ G2 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
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`their settlement agreement as confidential (e.g., uploading as “Parties and
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`Board Only”).
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a joint motion to
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`terminate in each proceeding identified in the Appendix; the joint motions
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`are due no later than September 15, 2014;
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`FURTHER ORDERED that the parties are required to file a true copy
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`of the parties’ settlement agreement in connection with the termination of
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`the proceeding, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b);
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`FURTHER ORDERED that, for efficiency, the parties may file the
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`settlement agreement for each patent, as an exhibit, in one of the
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`proceedings involving that patent, but each joint motion to terminate must
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`contain an appropriate reference to the settlement agreement;
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`FURTHER ORDERED that the parties may file a separate paper
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`requesting that each settlement agreement be treated as business confidential
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`information as specified in 37 C.F.R. § 42.74(c); and
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`FURTHER ORDERED that any confidential settlement agreement
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`must be filed, as an exhibit, electronically in the Patent Review Processing
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`3
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`IPR2014-00443
`Patent 7,147,759 B2
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`System (“PRPS”) in accordance with the instructions provided on the
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`Board’s website (e.g., uploading as “Parties and Board Only”).
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`For PETITIONER:
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`Richard Goldenberg
`Richard.Goldenberg@wilmerhale.com
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`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
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`For PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`bbarker@chsblaw.com
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`4
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`IPR2014-00443
`Patent 7,147,759 B2
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`APPENDIX
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`U.S. Patent No. 6,805,779 B2
`IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
`IPR2014-00913
`Status: Awaiting decisions on institution
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`U.S. Patent No. 6,806,652 B1
`IPR2014-00843, IPR2014-00923, IPR2014-00945
`Status: Awaiting decisions on institution
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`U.S. Patent No. 6,853,142 B2
`IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497,
`IPR2014-00498
`Status: Awaiting decisions on institution
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`U.S. Patent No. 7,147,759 B2
`IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446,
`IPR2014-00447
`Status: Instituted
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`U.S. Patent No. 7,604,716 B2
`IPR2014-00520, IPR2014-00521, IPR2014-00522, IPR2014-00523
`Status: Awaiting decisions on institution
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`U.S. Patent No. 7,808,184 B2
`IPR2014-00455, IPR2014-00456
`Status: Instituted
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`U.S. Patent No. 7,811,421 B2
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Status: Instituted
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`5
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