`571-272-7822
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`Paper 15
`Entered: March 27, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORP., DELL TECHNOLOGIES INC., and DELL INC.,
`Petitioner,
`v.
`OZMO LICENSING LLC,
`Patent Owner.
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`IPR2023-01060
`Patent 8,599,814 B1
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`Before MIRIAM L. QUINN, Acting Vice Chief Administrative Patent Judge,
`LARRY J. HUME and STEPHEN E. BELISLE, Administrative Patent
`Judges.
`.
`QUINN, Administrative Patent Judge.
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`
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`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; C.F.R. § 42.74
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`IPR2023-01060
`Patent 8,599,814 B1
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`INTRODUCTION
`I.
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively referred to as “the Parties”) filed a Joint Motion to Terminate
`Proceeding in the above-identified proceeding due to settlement. Paper 12
`(“Joint Motion”). In support of the Joint Motion, the Parties filed a
`Confidential Patent License Agreement (Ex. 2001) and a Release and
`License Agreement (Ex. 2002) (collectively, “Settlement Agreement”), as
`well as a Joint Request to Treat as Confidential and Keep Separate pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 13 (“Joint Request”)).
`II. DISCUSSION
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the above-identified inter partes
`review proceeding, and that the filed copy of the Settlement Agreement is a
`true and complete copy. Paper 12, 1. The Parties further represent that their
`Settlement Agreement resolves all currently pending Patent Office and
`District Court proceedings between the Parties involving the above-
`identified patent at issue. Id.
`We instituted a trial on the above-identified proceeding on January 16,
`2024. Paper 9. We have not yet decided the merits of the proceeding, and a
`final written decision has not been entered. Notwithstanding that the
`proceeding has moved beyond the preliminary stage, the Parties have shown
`adequately that the termination of the proceeding is appropriate. Under
`these circumstances, we determine that good cause exists to terminate the
`proceeding with respect to the Parties.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`file of the patent involved in this inter partes proceeding. Paper 13. After
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`IPR2023-01060
`Patent 8,599,814 B1
`reviewing the Settlement Agreement between Petitioner and Patent Owner,
`we find that the Settlement Agreement contains confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat the Settlement Agreement between Petitioner and Patent
`Owner as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, for the reasons discussed above, it is:
`III. ORDER
`ORDERED that the Joint Motion to Terminate is granted, and the
`proceeding is terminated; and
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`FURTHER ORDERED that the Joint Request to Keep Confidential
`and Separate is granted, and the Settlement Agreement shall be kept
`separate from the files of Patent 8,599,814 B1 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).
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`IPR2023-01060
`Patent 8,599,814 B1
`For PETITIONER:
`Brian K. Ericson (Lead Counsel)
`Christ Katsantonis
`DLA PIPER LLP
`brian.erickson@dlapiper.com
`chris.katsantonis@us.dlapiper.com
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`For PATENT OWNER:
`Lawrence P. Cogswell (Lead Counsel)
`Timothy J. Meagher
`Keith J. Wood
`Daniel Fleisher
`HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
`lawrence.cogswell@hbsr.com
`timothy.meagher@hbsr.com
`keith.wood@hbsr.com
`daniel.fleisher@hbsr.com
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