`Tel: 571-272-7822
`
`Paper 26
`Entered: August 7, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2022-01027 (Patent 8,467,543 B2)
`IPR2022-01124 (Patent 11,122,357 B2)
`
`
`
`
`Before GEORGIANNA W. BRADEN, NORMAN H. BEAMER, STEVEN
`M. AMUNDSON, and JASON M. REPKO, Administrative Patent Judges.1
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`1 This is not an expanded panel. A three-judge panel is assigned to each
`proceeding.
`
`
`
`
`
`IPR2022-01027 (Patent 8,467,543 B2)
`IPR2022-01124 (Patent 11,122,357 B2)
`
`
`With the Board’s authorization, Petitioner and Patent Owner filed, in
`each of the captioned proceedings, a Joint Motion to Terminate. Paper 22. 2
`The parties also filed their confidential agreements (IPR2022-01027,
`Exs. 2006, 2007; IPR2022-01124, Exs. 2016, 2017) and a Joint Motion to
`File the Agreement as Business Confidential Information (Paper 21).
`The parties represent that they have settled their dispute in these
`proceedings and in the related district-court litigation and they filed true
`copies of their agreement in its entirety. Paper 22, 1. The parties also
`represent that there are no other agreements between them made in
`connection with or in contemplation of the termination of these proceedings.
`Id. at 6. According to the parties, the agreements that they filed contain
`confidential information under the Board’s rules. Paper 21, 1 (citing
`37 C.F.R. § 42.54).
`The parties assert that these proceedings should be terminated because
`(1) the Board has not decided the merits, (2) the parties have settled their
`dispute, and (3) the parties jointly request termination. Paper 22, 3. We
`agree that termination is appropriate for all those reasons. See Consolidated
`Trial Practice Guide, 86 (Nov. 2019) (“The Board expects that a proceeding
`will terminate after the filing of a settlement agreement, unless the Board has
`already decided the merits of the proceeding.”). 3
`
`
`2 Similar motions were filed in both proceedings. See IPR2022-01027 Paper
`21 (Joint Motion to File Agreement as Business Confidential), Paper 22
`(Joint Motion to Terminate); IPR2022-01124, Paper 23 (Joint Motion to File
`Agreement as Business Confidential Information), Paper 24 (Joint Motion to
`Terminate). For brevity, citations in this order are to the papers in
`IPR2022-1027.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`IPR2022-01027 (Patent 8,467,543 B2)
`IPR2022-01124 (Patent 11,122,357 B2)
`
`
`We also agree that the agreements filed in each proceeding contain
`confidential information under the Board’s rules. See IPR2022-01027,
`Exs. 2006, 2007; IPR2022-01124, Exs. 2016, 2017. So they should be
`treated as business confidential information under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision under 35 U.S.C.
`§ 318(a).
`
`ORDER
`
`It is
`ORDERED that the parties’ Joint Motions to Terminate the
`Proceedings (IPR2022-01027, Paper 22; IPR2022-01124, Paper 24) are
`granted;
`FURTHER ORDERED that the parties’ Joint Motions to File the
`Agreement as Business Confidential Information (IPR2022-01027,
`Paper 21; IPR2022-01124, Paper 23) are granted and the parties’
`confidential agreements (IPR2022-01027, Exs. 2006, 2007; IPR2022-01124,
`Exs. 2016, 2017) shall be treated as business confidential information and be
`kept separate from the files of the respective challenged patents, U.S. Patent
`No. 8,467,543 B2 and U.S. Patent No. 11,122,357 B2, and made available
`only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`and
`
`FURTHER ORDERED that these proceedings are terminated.
`
`3
`
`
`
`IPR2022-01027 (Patent 8,467,543 B2)
`IPR2022-01124 (Patent 11,122,357 B2)
`
`PETITIONER:
`
`Erika Arner
`Daniel Cooley
`Kevin Rodkey
`Robert High
`Yanyi Liu
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`daniel.cooley@finnegan.com
`sonja.sahlsten@finnegan.com
`kevin.rodkey@finnegan.com
`robert.high@finnegan.com
`yanyi.liu@finnegan.com
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent Rubino
`Enrique Iturralde
`Richard Cowell
`FABRICANT LLP
`plambrianakos@fabricantllp.com
`vrubino@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`
`
`
`4
`
`
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