`571-272-7822
`
`
`
`
`
` Paper 8
`Date: January 24, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`Petitioner,
`v.
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`____________
`
`IPR2023-00056
`Patent 8,213,970 B2
`____________
`
`
`Before DANIEL J. GALLIGAN, KEVIN C. TROCK, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`AHMED, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2023-00056
`Patent 8,213,970 B2
`
`
`
`DISCUSSION
`
`With the Board’s authorization, Petitioner Cellco Partnership d/b/a
`Verizon Wireless (“Verizon”) and Patent Owner AGIS Software
`Development LLC (“AGIS”) filed (1) a Joint Motion to Terminate
`Proceedings (Paper 6 (“Mot.”)) based on a settlement agreement between
`them, (2) a true copy of their written settlement agreement (Ex. 2001), and
`(3) a Joint Request to Treat Settlement Agreement as Business Confidential
`Information and Keep Separate, Pursuant to 35 U.S.C. § 317(b) (Paper 7).
`Verizon and AGIS indicate that they have entered into a written
`settlement agreement that settles all disputes between them, including those
`relating to this proceeding and the related district court action, which has
`now been dismissed with prejudice. Mot. 1. The parties filed what they
`represent is a true and correct copy of their written settlement agreement. Id.
`The parties certify that there are no collateral agreements or understandings,
`oral or written, made in connection with, or in contemplation of, the
`termination of these proceeding. Id. at 2–3. The parties state that
`termination is appropriate because the proceeding is in a preliminary stage
`and trial has not been instituted. Id. at 2.
`Generally, the Board expects that a proceeding will terminate with
`respect to a petitioner after the filing of a settlement agreement. See Patent
`Trial and Appeal Board Consolidated Trial Practice Guide at 86 (Nov.
`2019)1 (“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.”). Here, this proceeding is in the preliminary stage and
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2023-00056
`Patent 8,213,970 B2
`
`trial has not yet been instituted. Accordingly, we are persuaded that, under
`these circumstances, termination of this proceeding is appropriate.
`In their Joint Request to Keep Separate, the parties ask that the
`settlement agreement (Ex. 2001) be treated as business confidential
`information and be kept separate from the file of the challenged patent.
`Paper 7, 1. After reviewing the settlement agreement, we find that the
`settlement agreement contains confidential business information regarding
`the terms of settlement. Accordingly, we grant the Joint Request to Keep
`Separate. See 37 C.F.R. § 42.74(c) (“A party to a settlement may request
`that the settlement be treated as business confidential information and be
`kept separate from the files of an involved patent or application.”).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate (Paper 6) is granted;
`FURTHER ORDERED that the Joint Request to Keep Separate
`(Paper 7) is granted;
`FURTHER ORDERED that the settlement agreement (Ex. 2001) be
`treated as business confidential information, kept separate from the file of
`the challenged patent, and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`pursuant to 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`
`3
`
`
`
`IPR2023-00056
`Patent 8,213,970 B2
`
`FOR PETITIONER:
`
`Justin J. Oliver
`Stephen K. Yam
`VENABLE LLP
`joliver@venable.com
`syam@venable.com
`
`FOR PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Enrique W. Iturralde
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturralde@fabricantllp.com
`
`
`
`4
`
`
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