`571-272-7822
`
`Paper 12
`Date: October 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00954 (Patent 8,448,855 B1)
`IPR2021-00955 (Patent 9,189,787 B1)
`IPR2021-00956 (Patent 9,240,009 B2)
`IPR2021-00957 (Patent 8,118,218 B2)1
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, 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
`IPR2021-00954.
`
`
`
`
`
`IPR2021-00954 (Patent 8,448,855 B1)
`IPR2021-00955 (Patent 9,189,787 B1)
`IPR2021-00956 (Patent 9,240,009 B2)
`IPR2021-00957 (Patent 8,118,218 B2)
`
`
`On October 19, 2021, Google LLC (“Petitioner”) and RFCyber Corp.
`(“Patent Owner”) filed a joint motion to terminate these proceedings
`pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 10 (“Motion” or
`“Mot.”). The motion was accompanied by a true, unredacted copy of a
`settlement and license agreement (Ex. 1040), and a joint request to treat the
`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 11).
`The parties represent in their joint motion that they have settled their
`dispute regarding the patents challenged in these inter partes review
`proceedings, and have agreed to terminate these proceedings. Mot. 2. The
`parties state that there are no other Board proceedings between the parties
`involving the challenged patents. Id. Additionally, the parties state that they
`have settled their dispute in the related district court litigation, RFCyber
`Corp. v. Google LLC and Google Payment Corp., Case No. 2:20-cv-00274-
`JRG (E.D. Tex.), and “do not anticipate further litigation between them
`concerning the” challenged patents. Id.
`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, 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 the petitions and terminate these preliminary proceedings with
`
`2
`
`
`
`IPR2021-00954 (Patent 8,448,855 B1)
`IPR2021-00955 (Patent 9,189,787 B1)
`IPR2021-00956 (Patent 9,240,009 B2)
`IPR2021-00957 (Patent 8,118,218 B2)
`
`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 and license
`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 and license agreement as business
`confidential.
`
`Accordingly, it is
`ORDERED that the joint motion to terminate is GRANTED;
`FURTHER ORDERED that Google LLC’s petitions for Inter Partes
`Review of U.S. Patent Nos. 8,448,855 B1, 9,189,787 B1, 9,240,009 B2, and
`8,118,218 B2 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 and license agreement as business confidential information, to be
`kept separate from the patent file, is GRANTED.
`
`3
`
`
`
`IPR2021-00954 (Patent 8,448,855 B1)
`IPR2021-00955 (Patent 9,189,787 B1)
`IPR2021-00956 (Patent 9,240,009 B2)
`IPR2021-00957 (Patent 8,118,218 B2)
`
`For PETITIONER:
`
`Andrew Ehmke
`Michael Parsons
`Vinu Raj
`HAYNES & BOONE LLP
`Andy.ehmke.ipr@haynesboone.com
`Michael.parsons.ipr@haynesboone.com
`Vinu.raj.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Vincent Rubino
`Peter Lambrianakos
`Enrique Iturralde
`Richard Cowell
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianoks@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`
`
`4
`
`
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