`571-272-7822
`
`
`
` Paper No. 13
`
`
` Entered: March 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOBILEIRON, INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`
`
`IPR2021-00162
`Patent 8,442,489 B2
`____________
`
`
`Before MIRIAM L. QUINN, STACY B. MARGOLIES, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`IPR2021-00162
`Patent 8,442,489 B2
`
`
`INTRODUCTION
`I.
`On March 9, 2021, following Board authorization via e-mail on
`March 3, 2021, the parties filed a Joint Motion to terminate this proceeding.
`Paper 11 (“Mot.”). Along with the Joint Motion, the parties filed, as Exhibit
`1055, a copy of a “Confidential Settlement Agreement” that they describe as
`“a true copy of settlement agreement entered between the Parties.” Mot. 2.1
`According to the parties, the “settlement agreement is the only agreement or
`understanding between Petitioner and Patent Owner made in connection
`with, or in contemplation of terminating this proceeding.” Id. at 3. The
`parties also filed a Joint Request to treat the agreement as business
`confidential information, and to maintain the agreement separate from the
`public file under 37 C.F.R. § 42.74(c). Paper 12.
`
`II. DISCUSSION
`On November 5, 2020, Petitioner filed a Petition requesting an inter
`partes review of claims 1–23 of U.S. Patent No. 8,442,489. Paper 2. The
`proceeding is still in its preliminary stages, and we have not entered a
`decision on whether to institute an inter partes review. In the Joint Motion,
`the Parties represent that the “settlement agreement was entered into in
`contemplation of terminating this proceeding.” Mot. 3; see also Ex. 1055,
`§ 3.3. The parties also state that they have settled all disputes relating to the
`challenged patent. Mot. 3.
`
`
`1 The Settlement Agreement is between Blackberry Limited (Patent Owner)
`and Ivanti, Inc. As noted in Petitioner’s updated Mandatory Notices, filed
`on January 5, 2021, “Ivanti, Inc. publicly announced that it has acquired
`Petitioner.” Paper 7, 1.
`
`
`
`IPR2021-00162
`Patent 8,442,489 B2
`
`
`In view of the early stage of this proceeding and the settlement
`between the parties, we determine that good cause exists to terminate the
`proceeding. We also have reviewed the settlement agreement, and we
`determine that it contains business confidential information regarding the
`terms of the settlement, and that good cause exists to treat it as business
`confidential information under 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the parties’ Joint Request (Paper 12) to treat the
`settlement agreement (Exhibit 1055) as business confidential information
`under 37 C.F.R. § 42.74(c) is granted, and that Exhibit 1055 shall be kept
`separate from the files of U.S. Patent 8,442,489, 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); and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate
`(Paper 11) is granted, and that the proceeding is terminated.
`
`
`
`
`
`
`
`
`
`
`IPR2021-00162
`Patent 8,442,489 B2
`
`PETITIONER:
`
`Parrish Freeman
`Eric Maschoff
`John Gadd
`David Call
`MASCHOFF BRENNAN
`pfreeman@mabr.com
`emaschoff@mabr.com
`jgadd@mabr.com
`dcall@mabr.com
`
`PATENT OWNER:
`
`Michael Hawkins
`Nicholas Stephens
`Christopher Hoff
`Andrew Dommer
`Patrick Bisenius
`Terry Stalford
`FISH AND RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`hoff@fr.com
`dommer@fr.com
`bisenius@fr.com
`stalford@fr.com
`
`
`
`
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