`Tel: 571-272-7822
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`Paper 8
`Entered: June 10, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ORACLE CORP.,
`Petitioner,
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`v.
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`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
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`IPR2020-00598
`Patent 7,231,379 B2
`____________
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`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
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`McNEILL, Administrative Patent Judge.
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`
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`ORDER
`Denying Without Prejudice Joint Motion to Terminate
`Granting Request to Keep Agreement Confidential
`35 U.S.C. §§ 317, 318; 37 C.F.R. § 42.5(a), 42.74
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`IPR2020-00598
`Patent 7,231,379 B2
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`On May 29, 2020, the parties filed a Joint Motion to Terminate.
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`Paper 6. The parties concurrently filed a joint request to treat the settlement
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`agreement as business confidential information, and for it to be kept separate
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`from the patent file, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
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`(Paper 7), along with a copy of the written settlement agreement (Ex. 1027).
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`The parties represent that Exhibit 1027 is a true and accurate copy of their
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`settlement agreement. Paper 13, 2. The parties also “represent that there are
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`no other agreements, oral or written, between the parties made in connection
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`with, or in contemplation of, the termination of the present proceeding.” Id.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.”
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`However, 35 U.S.C. § 317(b) requires that:
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`Any agreement or understanding between the patent owner and
`petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before the
`termination of the inter partes review as between the parties.
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`(emphasis added). Based on our review of the settlement agreement, the
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`Board has concerns that not all relevant collateral agreements have been
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`filed. Accordingly, the parties’ motion for termination of the proceeding is
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`denied without prejudice.
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`The parties may refile the Joint Motion to Terminate with any related
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`collateral agreements. To the extent there are any confidentiality issues with
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`2
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`IPR2020-00598
`Patent 7,231,379 B2
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`collateral agreements, the parties may file those agreements under seal along
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`with a motion to treat them as business confidential information.
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`Alternatively, if the parties wish to discuss the issue with the Board,
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`the parties may send an email to the Board proposing at least three dates and
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`times that the parties are available for a conference call.
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`After reviewing the parties’ settlement agreement, we find that the
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`settlement agreement contains business confidential information regarding
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`terms of the settlement and good cause exists to treat the settlement
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`agreement as business confidential information pursuant to 37 C.F.R.
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`§ 42.74(c).
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`Accordingly, it is
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`ORDERED that the Joint Motion to Terminate IPR2020-00598
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`(Paper 6) as to both Petitioner and Patent Owner is denied without prejudice;
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`FURTHER ORDERED that the joint request (Paper 7) to treat the
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`parties’ settlement agreement (Ex. 1027) as business confidential
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`information under 37 C.F.R. § 42.74(c), and for it to be kept separate from
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`the patent file in the above-captioned proceeding, is granted.
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`IPR2020-00598
`Patent 7,231,379 B2
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`For PETITIONER:
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`James M. Heintz
`Alireza Babaei
`DLA PIPER LLP
`jim.heintz@dlapiper.com
`alireza.babaei@dlapiper.com
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`
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`For PATENT OWNER:
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`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
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