Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: August 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC.; and RACKSPACE US, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01354 (Patent 9,054,728 B2)1
`Case IPR2017-01660 (Patent 7,161,506 B2)
`Case IPR2017-01663 (Patent 7,378,992 B2)
`Case IPR2017-01664 (Patent 8,643,513 B2)
`____________
`
`Before J. JOHN LEE, JASON J. CHUNG, SCOTT C. MOORE, and KEVIN C.
`TROCK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion to Terminate with Respect to Rackspace US, Inc.
`37 C.F.R. § 42.72
`
`
`1 This Decision applies to each of the listed cases. In our Decision, we refer to
`paper numbers, exhibit numbers, and dates from IPR2017-01354. However, the
`joint motions to terminate and the related documents discussed herein are
`substantially identical in the four proceedings listed above. We exercise our
`discretion to issue one Decision to be docketed in each case. The parties, however,
`are not authorized to use this caption for any subsequent papers.
`
`

`

`Case IPR2017-01354 (Patent 9,054,728); Case IPR2017-01660 (Patent 7,161,506);
`Case IPR2017-01663 (Patent 7,378,992); Case IPR2017-01664 (Patent 8,643,513)
`
`
`Petitioner filed its Petition on May 2, 2017. On August 15, 2017, Patent
`Owner Realtime Data LLC (“Realtime”) filed its Patent Owner Preliminary
`Response. On August 7, 2017, Realtime and Petitioner Rackspace US, Inc.
`(“Rackspace”) filed a joint motion to terminate the trial proceedings under
`35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 9), a true copy of a written
`settlement agreement (Ex. 2002), and a joint request to maintain confidentiality
`and to keep separate (Paper 10). Moreover, Petitioner NetApp, Inc. consents to
`and does not oppose termination of Rackspace from these proceedings. Paper 9, 1.
`The Board has not yet determined, under 35 U.S.C. § 314, whether or not to
`institute a review in the instant case. As no trial has been instituted based on the
`Petition, this matter is in the preliminary proceeding2 stage.
`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 patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” The grant of the motion to
`terminate will not result in the termination of the instant proceeding, because
`NetApp, Inc. remains as Petitioner. The parties are reminded that the Board is not
`a party to settlements, and may identify independently any question of
`patentability. 37 C.F.R § 42.74(a).
`Generally, however, the Board expects that a proceeding will terminate as to
`settling parties 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 Board is
`
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`2 A preliminary proceeding begins with the filing of a petition for instituting a trial
`and ends with a written decision as to whether trial will be instituted. 37 C.F.R.
`§ 42.2.
`
`
`
`2
`
`

`

`Case IPR2017-01354 (Patent 9,054,728); Case IPR2017-01660 (Patent 7,161,506);
`Case IPR2017-01663 (Patent 7,378,992); Case IPR2017-01664 (Patent 8,643,513)
`
`persuaded that, under these circumstances, it is appropriate to terminate this
`proceeding only as to Rackspace. See 37 C.F.R. § 42.72.
`Accordingly, it is:
`ORDERED that the joint motion to terminate this proceeding with respect to
`Rackspace is GRANTED, and these proceedings are hereby terminated only as to
`Rackspace in IPR2017-01354, IPR2017-01660, IPR2017-01663, IPR2017-01664;
`and
`
`FURTHER ORDERED that the parties’ joint request that the written
`settlement agreement (Ex. 2002) be: (i) treated as business confidential
`information; (ii) kept separate from the patent files; (iii) kept confidential from any
`third party (including from the previously settled Petitioners and the non-settling
`Petitioners); and (iv) made available only to Federal Government agencies on
`written request, or to any person on a showing of good cause, under the provisions
`of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.
`
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`3
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`

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`Case IPR2017-01354 (Patent 9,054,728); Case IPR2017-01660 (Patent 7,161,506);
`Case IPR2017-01663 (Patent 7,378,992); Case IPR2017-01664 (Patent 8,643,513)
`
`
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`
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`PETITIONERS:
`
`Diek O. Van Nort
`Jonathan Bockman
`MORRISON & FOERSTER LLP
`DVanNort@mofo.com
`JBockman@mofo.com
`
`David L. McCombs
`Kyle Howard
`Greg Webb
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`kyle.howard.ipr@haynesboone.com
`greg.webb.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`William P. Rothwell
`Kayvan Noroozi
`NOROOZI PC
`william@noroozipc.com
`kayvan@noroozipc.com
`
`
`
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`
`
`4
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`