Paper 68
`
`
` Entered: October 8, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ORACLE CORPORATION, NETAPP INC., and
`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01207 (Patent 7,051,147 B2)
` Case IPR2014-01209 (Patent 7,051,147 B2)1
`____________
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`CHERRY, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Terminate as to Petitioner Huawei
`37 C.F.R. § 42.74
`
`
`
`
`1 The Board is entering this Order in each proceeding. The parties are not
`authorized to use a caption identifying multiple proceedings.
`
`

`
`IPR2014-01207 (Patent 7,051,147 B2)
`IPR2014-01209 (Patent 7,051,147 B2)
`
`
`On September 22, 2015, Petitioner Huawei Technologies Co. Ltd.
`(“Huawei”) and Patent Owner filed joint motions to terminate the above-captioned
`proceedings as to only Huawei. IPR2014-01207, Paper 56; IPR2014-01209,
`Paper 55. Huawei and Patent Owner filed a copy of their written settlement
`agreement covering, inter alia, Patent 7,051,147 B2, which is the patent involved
`in these inter partes reviews (Ex. 1235). Huawei and Patent Owner also filed joint
`motions to seal and requested to have their settlement agreement treated as
`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).2 IPR2014-01207, Paper 57; IPR2014-01209, Paper 56. We authorized
`the filing of these papers.
`Huawei and Patent Owner represent that the settlement agreement filed as
`Exhibit 1235 is a true and complete copy of their settlement agreement, and is the
`only settlement agreement between the parties. IPR2014-01207, Paper 56, 2;
`IPR2014-01209, Paper 55, 2. Huawei and Patent Owner further indicate that they
`have settled all of their disputes involving the aforementioned patents. IPR2014-
`01207, Paper 56, 1; IPR2014-01209, Paper 55, 1. In particular, they have agreed
`to settle and dismiss with prejudice the related district court case concerning these
`patents. IPR2014-01207, Paper 56, 1–2; IPR2014-01209, Paper 55, 1–2; Ex. 1235.
`More importantly, the termination of the inter partes reviews at issue, with respect
`to only Huawei, will not result in the termination of any of the reviews, as
`
`
`2 Although styled as a “Joint Motion to Seal Under 37 C.F.R. §§ 42.14 and 42.54,”
`the motion to terminate refers to this as a request under 37 C.F.R. § 42.74(c). See
`IPR2014-01207, Paper 56, 2; IPR2014-01209, Paper 55, 2. Because settlement
`agreements are addressed specifically under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), we apply these provisions here. Particularly, given the reference in the
`motion to terminate, we will interpret the “Joint Motion to Seal” as a request under
`37 C.F.R. § 42.74(c).
`
`
`
`2
`
`

`
`IPR2014-01207 (Patent 7,051,147 B2)
`IPR2014-01209 (Patent 7,051,147 B2)
`
`additional Petitioners remain. IPR2014-01207, Paper 56, 1–2; IPR2014-01209,
`Paper 55, 1–2.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and the patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” Here, although the instant
`inter partes reviews have been instituted, we have not entered a final written
`decision in any of the proceedings. Generally, the Board expects that a proceeding
`will terminate as to the parties upon settlement. See, e.g., Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon review of the
`procedural posture of these proceedings and the facts before us, we are persuaded
`that good cause exists to terminate Huawei.
`Both parties request that the Settlement Agreement be kept separate and
`treated as business confidential information under 37 C.F.R. § 42.74(b). IPR2014-
`01207, Paper 56, 2; IPR2014-01209, Paper 55, 2. The Joint Motion to Seal was
`filed along with the settlement agreement. IPR2014-01207, Paper 57; IPR2014-
`01209, Paper 56. Accordingly and in view of our interpretation of the Joint
`Motion to Seal as a request under 37 C.F.R. § 42.74(c), the Joint Motion to Seal is
`granted. Pursuant to 37 C.F.R. § 42.74(c), the Settlement Agreement “shall only
`be available: (1) [t]o a Government agency on written request to the Board; or (2)
`[t]o any other person upon written request to the Board to make the settlement
`agreement available, along with the fee specified in [37 C.F.R. §42.15(d)] and on a
`showing of good cause.”
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motions to Terminate, with respect to Huawei,
`filed in each of these proceedings, are granted;
`
`
`
`3
`
`

`
`IPR2014-01207 (Patent 7,051,147 B2)
`IPR2014-01209 (Patent 7,051,147 B2)
`
`
`FURTHER ORDERED that these reviews are terminated with respect to
`Huawei only; but these reviews continue to proceed with Patent Owner and the
`remaining Petitioners—namely Oracle Corporation and Netapp, Inc.;
`FURTHER ORDERED that the Joint Motions to Seal filed by Huawei and
`Patent Owner that request that the 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), are granted; and
`FURTHER ORDERED that any subsequent papers filed in these inter partes
`reviews should not include Huawei in the caption.
`
`
`
`
`
`
`
`
`4
`
`

`
`IPR2014-01207 (Patent 7,051,147 B2)
`IPR2014-01209 (Patent 7,051,147 B2)
`
`PETITIONERS:
`Greg Gardella
`Scott McKeown
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`PATENT OWNER:
`Steven R. Sprinkle
`John L. Adair
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
`
`Russell Wong
`James Hall
`Keith Rutherford
`BLANK ROME LLP
`CrossroadsIPR@blankrome.com
`
`
`
`
`
`
`5