throbber
Trials@uspto.gov Paper No. 16
`571-272-7822 Entered: September 9, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00443
`Patent 7,147,759 B21
`____________
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`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 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.
`
`
`
`

`

`IPR2014-00443
`Patent 7,147,759 B2
`
`
`
`
`
`
`Petitioner, Intel Corporation, and Patent Owner, Zond, LLC, jointly
`
`requested the conference call with the Board, seeking authorization to file a
`
`motion to terminate in each of the inter partes reviews identified in the
`
`Appendix of this Order. Those proceedings involve the following patents:
`
`U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759 B2,
`
`7,604,716 B2, 7,808,184 B2, and 7,811,421 B2.
`
`A conference call was held on September 8, 2014, between respective
`
`counsel for the parties and Judges Turner, Stephens, Chang, Mitchell, and
`
`Meyer. During the conference call, the parties indicated that they have
`
`settled their dispute, and reached a settlement agreement regarding the
`
`above-identified patents.
`
`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 proceeding identified in the Appendix.
`
`Each joint motion must include a brief explanation as to why
`
`termination is appropriate in the proceeding. 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.
`
`
`
`2
`
`

`

`IPR2014-00443
`Patent 7,147,759 B2
`
`
`
`
`
`
`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 proceeding identified in the Appendix; the joint motions
`
`are due no later than September 15, 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);
`
`FURTHER ORDERED that, for efficiency, the parties may file the
`
`settlement agreement for each patent, as an exhibit, in one of the
`
`proceedings involving that patent, but each joint motion to terminate must
`
`contain an appropriate reference to the settlement agreement;
`
`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
`
`
`
`3
`
`

`

`IPR2014-00443
`Patent 7,147,759 B2
`
`
`
`
`
`
`System (“PRPS”) in accordance with the instructions provided on the
`
`Board’s website (e.g., uploading as “Parties and Board Only”).
`
`
`
`For PETITIONER:
`
`Richard Goldenberg
`Richard.Goldenberg@wilmerhale.com
`
`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
`
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2014-00443
`Patent 7,147,759 B2
`
`
`
`
`APPENDIX
`
`
`
`
`U.S. Patent No. 6,805,779 B2
`IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
`IPR2014-00913
`Status: Awaiting decisions on institution
`
`U.S. Patent No. 6,806,652 B1
`IPR2014-00843, IPR2014-00923, IPR2014-00945
`Status: Awaiting decisions on institution
`
`U.S. Patent No. 6,853,142 B2
`IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497,
`IPR2014-00498
`Status: Awaiting decisions on institution
`
`U.S. Patent No. 7,147,759 B2
`IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446,
`IPR2014-00447
`Status: Instituted
`
`U.S. Patent No. 7,604,716 B2
`IPR2014-00520, IPR2014-00521, IPR2014-00522, IPR2014-00523
`Status: Awaiting decisions on institution
`
`U.S. Patent No. 7,808,184 B2
`IPR2014-00455, IPR2014-00456
`Status: Instituted
`
`U.S. Patent No. 7,811,421 B2
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Status: Instituted
`
`
`
`
`5
`
`
`
`

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