Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper: 14
`Entered: June 27, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC., AND APPLE INC.,
`Petitioner,
`v.
`BILLJCO, LLC.,
`Patent Owner.
`____________
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)1
`
`
`____________
`Before THU A. DANG, ROBERT J. WEINSCHENK and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`TERMINATION
`Settlement as to Petitioner Cisco Systems, Inc.
`Prior to Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses issues that are the same in each of the
`above-captioned preliminary proceedings. We exercise our discretion to
`issue one order for all of the above-captioned preliminary proceedings. The
`proceedings have not been consolidated, and the parties are not authorized to
`use this caption format.
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper: 14
`Entered: June 27, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC., AND APPLE INC.,
`Petitioner,
`v.
`BILLJCO, LLC.,
`Patent Owner.
`____________
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)1
`
`
`____________
`Before THU A. DANG, ROBERT J. WEINSCHENK and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`TERMINATION
`Settlement as to Petitioner Cisco Systems, Inc.
`Prior to Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 This Order addresses issues that are the same in each of the
`above-captioned preliminary proceedings. We exercise our discretion to
`issue one order for all of the above-captioned preliminary proceedings. The
`proceedings have not been consolidated, and the parties are not authorized to
`use this caption format.
`
`
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`
`
`INTRODUCTION
`I.
`In each of the above-captioned preliminary proceedings, Petitioner
`Cisco Systems, Inc. (“Cisco”) and Patent Owner BillJCo, LLC (“Patent
`Owner”) (collectively “the Parties”), with the Board’s prior authorization,
`filed a Joint Motion to Terminate Inter Partes Review as to Petitioner Cisco
`Systems, Inc. (Paper 12, “Joint Motion”) and a Joint Motion to Treat
`Settlement Information as Business Confidential Information and Keep
`Separate (Paper 13, “Joint Request”).2 In support of each Joint Motion, the
`Parties filed a copy of a written “CONFIDENTIAL SETTLEMENT AND
`LICENSE AGREEMENT.” Ex. 1999 (“Settlement Agreement”).
`
`II. DISCUSSION
`In each Joint Motion, the Parties “jointly request termination of inter
`partes review (“IPR”) of the pending case with respect to Cisco.” Joint
`Motion 2.3 The Parties state that “[t]he dispute between Cisco and Patent
`Owner has been resolved pursuant to a written agreement (the “Settlement
`Agreement”) that resolves the dispute.” Id. Also, “[f]or the avoidance of
`doubt, the Parties state that the IPR will continue with respect to Petitioners
`Apple Inc., Hewlett-Packard Enterprise Co., and Aruba Networks, LLC.”
`Id. The Parties state as well that “[t]he Settlement Agreement . . . has been
`made in writing, and a true and correct copy shall be filed with this office as
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(b)-(c).” Id. at 3. In addition, the Parties “certify that there
`
`2 We cite to Papers and Exhibits in IPR2022-00420. Similar items were
`filed in IPR2022-00426.
`3 The Joint Motion does not include page numbers. We identify the pages of
`the Joint Motion as if they were numbered consecutively, starting with
`“Joint Motion 1” and ending with “Joint Motion 7.”
`
`2
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`
`are no collateral agreements or understandings made in connection with, or
`in contemplation of, the termination of this inter partes review.” Id.
`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). Here, in each Joint Motion, the Parties “jointly and
`respectfully request that the Board terminate the instant proceeding with
`respect to Cisco” and that “[t]ermination is proper” because:
`(1) “[t]he Board has not yet decided the merits of the
`proceeding before the request for termination is filed”;
`(2) “[t]he Parties are jointly requesting termination,” and
`“[t]here are strong public policy reasons to favor settlement
`between the parties to a proceeding”;
`(3) “[t]he litigation proceeding styled as BillJCo, LLC v.
`Cisco Systems, Inc., Case No. 2:21-cv-181 (E.D. Tex.)
`involving the Patent-At-Issue has been recently terminated
`pursuant to the Settlement Agreement”;
`(4) “[t]he Settlement Agreement . . . has been made in
`writing,” “a true and correct copy shall be filed with this
`Office,” and “there are no collateral agreements or
`understandings made in connection with, or in contemplation
`of, the termination of this inter partes review.”
`Joint Motion 2–3 (citations and internal quotations omitted).
`For at least these reasons, we agree that good cause exists and that it is
`appropriate to dismiss the petition and terminate the preliminary proceeding
`in each of the above-captioned matters as to Petitioner Cisco Systems, Inc.
`See 37 C.F.R. § 42.74.
`In each Joint Request, “[p]ursuant to 35 U.S.C. § 317(B) and 37
`C.F.R. § 42.74(b)-(c), . . . the Parties . . . jointly request that the settlement
`agreement resolving the dispute between Cisco and Patent Owner . . .
`submitted in this case concurrently herewith be treated as business
`
`3
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`
`confidential information and kept separate from the files of the involved
`patent and inter partes review proceeding,” and that the Settlement
`Agreement be “made available to Federal Government agencies” only “upon
`written request, or to any other person upon written request and a finding of
`good cause after notice to the parties to the agreement and an opportunity for
`those parties to respond to the request.” Joint Request 2.4
`After reviewing the Settlement Agreement between the Parties, we
`find that the Settlement Agreement contains business confidential
`information regarding the terms of settlement. Thus, we determine that good
`cause exists to treat the Settlement Agreement (Ex. 1999) between the
`Parties as business confidential information under 37 C.F.R. § 42.74(c), to
`keep it separate from the files of the involved patents and associated
`preliminary proceedings, and to limit its availability as requested by the
`Parties.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that, in each of IPR2022-00420 and IPR2022-00426, the
`Parties’ Joint Motion to Terminate Inter Partes Review as to Petitioner
`Cisco Systems, Inc. is granted;
`FURTHER ORDERED that, in each of IPR2022-00420 and
`IPR2022-00426, the preliminary proceeding as to Petitioner Cisco Systems,
`
`
`4 The Joint Request does not include page numbers. We identify the pages of
`the Joint Request as if they were numbered consecutively, starting with
`“Joint Request 1” and ending with “Joint Request 5.”
`
`4
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`
`Inc. is terminated and the petition as to Petitioner Cisco Systems, Inc. is
`dismissed; and
`FURTHER ORDERED that, in each of IPR2022-00420 and
`IPR2022-00426, the Parties’ Joint Motion to Treat Settlement Information as
`Business Confidential Information and Keep Separate is granted, and the
`Settlement Agreement shall remain designated as “Parties and Board Only”
`in 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 patents and
`associated preliminary proceedings, pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`
`
`5
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`
`For PETITIONER:
`
`Elana B. Araj
`Andrew R. Sommer
`Rose Cordero Prey
`GREENBERG TRAURIG, LLP
`araje@gtlaw.com
`sommera@gtlaw.com
`preyr@gtlaw.com
`
`Jeffrey D. Blake
`Daniel W. McDonald
`D. Kent Stier
`MERCHANT & GOULD P.C.
`jblake@merchantgould.com
`dmcdonald@merchantgould.com
`kstier@merchantgould.com
`
`Larissa S. Bifano
`Jonathan Hicks
`Zachary Conrad
`DLA PIPER, LLP
`larissa.bifano@dlapiper.com
`jonathan.hicks@dlapiper.com
`zack.conrad@dlapiper.com
`
`
`For PATENT OWNER:
`
`Brian Michalek
`Joseph Kuo
`Brian Landry
`SAUL EWING ARNSTEIN & LEHR LLP
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`
`
`
`6
`
`
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