`Trials@uspto.gov
`571-272-7822 Entered: September 26, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOKIA CORP. AND NOKIA OF AMERICA CORP.,
`Petitioner,
`
`v.
`
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01289 (Patent 6,839,751 B1)
`Case IPR2019-01290 (Patent 6,651,099 B1)
`Case IPR2019-01291 (Patent 6,665,725 B1)
`Case IPR2019-01292 (Patent 6,771,646 B1)
`Case IPR2019-01293 (Patent 6,954,789 B2)1
`____________
`
`
`Before JEFFREY S. SMITH, CHARLES J. BOUDREAU, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motion to Terminate Due to Settlement Prior to Institution
`35 U.S.C. § 317; 37 C.F.R. §§ 42.71(a), 42.74
`
`
`1 We exercise our discretion to issue a single Decision to be entered in
`each case using a joint caption. The parties are not permitted to use this
`caption. For convenience, we use the Paper and Exhibit numbers from
`IPR2019-01289.
`
`
`
`
`
`
`Case IPR2019-01289 (Patent 6,839,751 B1)
`Case IPR2019-01290 (Patent 6,651,099 B1)
`Case IPR2019-01291 (Patent 6,665,725 B1)
`Case IPR2019-01292 (Patent 6,771,646 B1)
`Case IPR2019-01293 (Patent 6,954,789 B2)
`
`
`
`On September 25, 2019, Nokia Corp. and Nokia of America Corp.
`(“Petitioner”) and Packet Intelligence LLC (“Patent Owner”) filed a joint
`motion to terminate these proceedings pursuant to 35 U.S.C. § 317(a) and
`37 C.F.R. § 42.74. Paper 7 (“Motion” or “Mot.”). The motion was
`accompanied by a true, unredacted copy of a settlement agreement
`(Ex. 1069), and a joint request to treat the settlement agreement as business
`confidential information, to be kept separate from the patent file, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 8).
`The parties represent in their joint motion that they have agreed to
`terminate these inter partes review proceedings, and that there are no other
`litigations or proceedings between the parties involving the patents
`challenged in these proceedings. Mot. 5. The parties state that the
`settlement agreement “resolves all of their disputes concerning” the
`challenged patents. Id. at 6. Additionally, the parties state that they have
`filed a stipulation and proposed order for dismissal of the related district-
`court case between the parties, Packet Intelligence LLC v. Nokia of America
`Corporation, Case No. 2:18-cv-00382 (E.D. Tex.). Id. at 5.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see also 37 C.F.R. § 42.72. These proceedings are in a preliminary
`stage. Patent Owner has not yet filed any preliminary response, and no
`decisions on whether to institute any trial have been issued. Under the
`circumstances presented here, we determine that it is appropriate to dismiss
`
`
`
`2
`
`
`
`
`
`Case IPR2019-01289 (Patent 6,839,751 B1)
`Case IPR2019-01290 (Patent 6,651,099 B1)
`Case IPR2019-01291 (Patent 6,665,725 B1)
`Case IPR2019-01292 (Patent 6,771,646 B1)
`Case IPR2019-01293 (Patent 6,954,789 B2)
`
`
`the petitions and terminate these preliminary proceedings with respect to
`both Petitioner and Patent Owner. Accordingly, we grant the parties’ joint
`motion to terminate.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the settlement agreement
`treated as business confidential information and kept separate from the
`patent files of the challenged patents. Thus, we grant the joint request to
`treat the settlement agreement as business confidential.
`Accordingly, it is
`ORDERED that the joint motion to terminate is GRANTED;
`FURTHER ORDERED that Nokia Corp. and Nokia of America
`Corp.’s petitions for Inter Partes Review of U.S. Patent Nos. 6,651,099,
`6,665,725, 6,771,646, 6,839,751, and 6,954,789 are DISMISSED, pursuant
`to 37 C.F.R. §§ 42.5(a) and 42.71(a); and
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreement as business confidential information, to be kept
`separate from the patent file, is GRANTED.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`Case IPR2019-01289 (Patent 6,839,751 B1)
`Case IPR2019-01290 (Patent 6,651,099 B1)
`Case IPR2019-01291 (Patent 6,665,725 B1)
`Case IPR2019-01292 (Patent 6,771,646 B1)
`Case IPR2019-01293 (Patent 6,954,789 B2)
`
`
`
`FOR PETITIONER:
`Thomas W. Davison
`S. Benjamin Pleune
`M. Scott Stevens
`Stephen Lareau
`ALSTON & BIRD LLP
`tom.davison@alston.com
`ben.pleune@alston.com
`scott.stevens@alston.com
`stephen.lareau@alston.com
`
`
`FOR PATENT OWNER:
`
`Michael Heim
`Robert Bullwinkel
`HEIM PAYNE & CHORUSH, LLP
`mheim@hpcllp.com
`abullwinkel@hpcllp.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
