Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 15
`Entered: February 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`IPR2020-01383
`Patent 7,016,963 B1
`____________
`
`
`Before DAVID C. McKONE, JOHN A. HUDALLA, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 15
`Entered: February 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`IPR2020-01383
`Patent 7,016,963 B1
`____________
`
`
`Before DAVID C. McKONE, JOHN A. HUDALLA, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2020-01383
`Patent 7,016,963 B1
`
`
`I.
`
`INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(collectively “the Parties”) filed an amended1 joint motion to withdraw the
`
`Petition. Paper 13 (“Joint Motion”). In support of the Joint Motion, the
`
`Parties filed a copy of a written confidential settlement agreement.
`
`Exs. 1013, 1014 (collectively, “Settlement Agreement”). The Parties also
`
`filed an amended joint request to treat the Settlement Agreement as business
`
`confidential information and to keep it separate from the files of the
`
`challenged patent. Paper 14 (“Joint Request”).
`
`II. DISCUSSION
`
`In the Joint Motion, the Parties state that they have resolved their
`
`disputes regarding the challenged patent, which include this proceeding and
`
`the related district court litigation. Joint Motion 1. The Parties state that the
`
`Settlement Agreement is “a true copy of any agreement or understanding . . .
`
`between Petitioner and Patent Owner made in connection with, or in
`
`contemplation of, the requested withdrawal of the Petition.” Id. at 1–2.
`
`
`1 The Parties originally filed a joint motion (Paper 11) to withdraw the
`Petition and a joint request (Paper 12) to treat the settlement agreement
`(Ex. 1013) as business confidential information and to keep it separate from
`the files of the challenged patent. Having reviewed the version of the
`settlement agreement filed with those papers, we determined that it
`references a “Schedule 1” and a “Schedule 2,” but it did not include those
`schedules. On January 25, 2021, Judges McKone, Hudalla, and Hamann
`held a teleconference with counsel for the parties in connection with
`IPR2020-01081 to discuss the missing schedules. The Parties subsequently
`filed the amended papers (Papers 13 and 14) and the missing schedules
`(Ex. 1014).
`
`2
`
`
`
`IPR2020-01383
`Patent 7,016,963 B1
`
`Accordingly, the Parties jointly request termination of this proceeding. Id. at
`
`2.
`
` There are strong public policy reasons to favor settlement between
`
`the parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg.
`
`64,280 (Nov. 21, 2019). The proceeding is in its preliminary phase, and we
`
`have not yet decided whether to institute a trial in the proceeding. In view of
`
`the early stage of the proceeding and the settlement between the Parties, we
`
`determine that it is appropriate to dismiss the petition and terminate the
`
`proceeding, without rendering a decision on institution or a final written
`
`decision.
`
`In the Joint Request, the Parties jointly request to treat the Settlement
`
`Agreement as business confidential information and to have it be kept
`
`separate from the files of the challenged patent and associated proceeding.
`
`Joint Request 1.
`
`After reviewing the Settlement Agreement between the Parties, we
`
`find that the Settlement Agreement contains confidential business
`
`information regarding the terms of settlement. We determine the Settlement
`
`Agreement (Exs. 1013, 1014) between the Parties shall be treated as
`
`business confidential information under 37 C.F.R. § 42.74(c) and shall be
`
`kept separate from the files of the challenged patent and associated
`
`proceeding.
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`3
`
`
`
`IPR2020-01383
`Patent 7,016,963 B1
`
`
`Accordingly, it is
`
`III. ORDER
`
`ORDERED that the amended joint motion to withdraw the Petition
`
`(Paper 13) is granted;
`
`FURTHER ORDERED that the above-captioned proceeding is
`
`terminated and the petition is dismissed; and
`
`FURTHER ORDERED that the amended joint request to treat the
`
`Settlement Agreement as business confidential information (Paper 14) is
`
`granted, and the Settlement Agreement (Exs. 1013, 1014) shall remain
`
`designated as “Parties and Board Only” in the Board’s filing system, shall
`
`made available only to Federal Government agencies on written request, or
`
`to any person on a showing of good cause, and shall be kept separate from
`
`the files of the involved patent and associated proceeding, pursuant to
`
`37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2020-01383
`Patent 7,016,963 B1
`
`FOR PETITIONER:
`
`Katherine A. Vidal
`Louis L. Campbell
`Michael A. Tomasulo
`WINSTON & STRAWN LLP
`kvidal@winston.com
`llcampbell@winston.com
`mtomasulo@winston.com
`
`FOR PATENT OWNER:
`
`Byron L. Pickard
`Daniel S. Block
`Lestin L. Kenton
`Christopher O’Brien
`James R. Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`cobrien-PTAB@sternekessler.com
`jhietala-PTAB@sternekessler.com
`
`Russel J. Rigby
`INTELLECTUAL VENTURES
`rrigby@intven.com
`
`
`5
`
`
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