Trials@uspto.gov
`571-272-7822 Entered: September 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00468
`IPR2014-00470
`IPR2014-00473
`Patent 7,811,421 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.
`
`
`
`
`
`JUDGMENT
`Termination of Proceeding after Institution
`37 C.F.R. § 42.73
`
`
`1 This Decision addresses the same issue in the above-identified cases.
`Therefore, we issue one Decision to be entered in all cases. The parties may
`not use this style of filing in subsequent papers, without prior authorization.
`
`
`
`
`
`571-272-7822 Entered: September 15, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00468
`IPR2014-00470
`IPR2014-00473
`Patent 7,811,421 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.
`
`
`
`
`
`JUDGMENT
`Termination of Proceeding after Institution
`37 C.F.R. § 42.73
`
`
`1 This Decision addresses the same issue in the above-identified cases.
`Therefore, we issue one Decision to be entered in all cases. The parties may
`not use this style of filing in subsequent papers, without prior authorization.
`
`
`
`
`
`
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Patent 7,811,421 B2
`
`On September 12, 2014, Petitioner, Intel Corporation (“Intel”), and
`
`Patent Owner, Zond, LLC (“Zond”), filed a Joint Motion to Terminate in
`
`each of the above-identified proceedings, involving of U.S. Patent
`
`No. 7,811,421 B2 (“the ’421 patent”). Paper 14.2 The parties also filed a
`
`true copy of their Written Settlement Agreement, made in connection with
`
`the termination of the proceedings, in accordance with 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(b). Ex. 1023.3 Additionally, the parties submitted a
`
`Joint Request to have their Written Settlement Agreement treated as
`
`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c). Paper 14, 9. For the reasons set forth below, the Joint Motions
`
`to Terminate and the Joint Request are granted.
`
`In their Joint Motions to Terminate, the parties indicate that they have
`
`settled all of their disputes involving 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. Id. at 1. In particular, the parties have
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`agreed to settle and dismiss their related district court litigation, Zond, LLC
`
`v. Intel Corp., No.1:13-cv-11570-RGS (D. Mass.). Id. More importantly,
`
`the parties also have submitted Motions to Terminate all other inter partes
`
`reviews requested by Intel for the aforementioned patents. The proceedings,
`
`involving those patents, are listed in the Appendix of this Decision.
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00468 as
`representative, and all citations are to IPR2014-00468 unless otherwise
`noted.
`
`3 As authorized by the Board’s previous Order, the parties filed one copy of
`their Written Settlement Agreement in IPR2014-00468 for all the above-
`identified proceedings.
`
`
`
`2
`
`
`
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Patent 7,811,421 B2
`
`On September 2, 2014, the Board instituted an inter partes review of
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`the ’421 patent, in each above-identified proceeding. Paper 12. However,
`
`Zond has not filed a Patent Owner Response. Nor has Intel filed a Reply.
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`Furthermore, no Final Hearing has been held.
`
`Zond urges the Board to terminate the above-identified proceedings
`
`with respect to both parties, because concluding the proceedings, at this
`
`early stage, would promote efficiency and reduce cost, consistent with the
`
`legislative intent. Paper 14, 5–8 (citing 154 Cong. Rec. S9987 (daily ed.
`
`Sept. 27, 2008) (statement of Sen. Kyl); 157 Cong. Rec. S1376 (daily ed.
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`Mar. 8, 2001) (statement of Sen. Kyl)). Zond contends that terminating the
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`proceedings upon settlement would “establish a more efficient and
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`streamlined patent system that, inter alia, limits unnecessary and
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`counterproductive litigation cost,” and “foster[] an environment that
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`promotes settlements, thereby creating a timely, cost-effective alternative to
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`litigation.” Id. at 5–6.
`
`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). Upon consideration of
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`the facts before us, we determine that it is appropriate to terminate the
`
`above-identified proceedings as to both parties, and enter judgment.
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`For the foregoing reasons, it is:
`
`
`
`ORDERED that the Joint Motions to Terminate the above-identified
`
`inter partes reviews are granted;
`
`FURTHER ORDERED that the above-identified proceedings are
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`terminated as to all parties—namely, Intel and Zond; and
`
`
`
`3
`
`
`
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Patent 7,811,421 B2
`
`FURTHER ORDERED that the parties’ Joint Request that their
`
`Written Settlement Agreement be treated as business confidential
`
`information kept separate from the patent file, and made available only to
`
`Federal Government agencies on written request, or to any person on a
`
`showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c), is granted.
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`4
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`
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`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Patent 7,811,421 B2
`
`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
`
`
`
`
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`5
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`
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`IPR2014-00468, IPR2014-00470, IPR2014-00473
`Patent 7,811,421 B2
`
`APPENDIX
`
`
`U.S. Patent No. 6,805,779 B2
`IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
`IPR2014-00913
`
`U.S. Patent No. 6,806,652 B1
`IPR2014-00843, IPR2014-00923, IPR2014-00945
`
`U.S. Patent No. 6,853,142 B2
`IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497,
`IPR2014-00498
`
`U.S. Patent No. 7,147,759 B2
`IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446,
`IPR2014-00447
`
`U.S. Patent No. 7,604,716 B2
`IPR2014-00520, IPR2014-00521, IPR2014-00522, IPR2014-00523
`
`U.S. Patent No. 7,808,184 B2
`IPR2014-00455, IPR2014-00456
`
`U.S. Patent No. 7,811,421 B2
`IPR2014-00468, IPR2014-00470, IPR2014-00473
`
`
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`
`6
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