Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 7
`Entered: October 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`SOVEREIGN PEAK VENTURES, LLC,
`Patent Owner.
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`
`Before THU A. DANG, GARTH D. BAER, and JOHN R. KENNY,
`Administrative Patent Judges.1
`
`BAER, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 We exercise our discretion to issue one order for all of the above-captioned
`proceedings. The proceedings have not been consolidated, and the parties
`are not authorized to use this caption format.
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 7
`Entered: October 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Petitioner,
`
`v.
`
`SOVEREIGN PEAK VENTURES, LLC,
`Patent Owner.
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`
`Before THU A. DANG, GARTH D. BAER, and JOHN R. KENNY,
`Administrative Patent Judges.1
`
`BAER, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 We exercise our discretion to issue one order for all of the above-captioned
`proceedings. The proceedings have not been consolidated, and the parties
`are not authorized to use this caption format.
`
`
`
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`
`I. INTRODUCTION
`In each of the above-captioned preliminary proceedings, Petitioner
`Hewlett Packard Enterprise Company (“Petitioner”) and Patent Owner
`Sovereign Peak Ventures, LLC (“Patent Owner”) (collectively “the
`Parties”), with the Board’s prior authorization, filed a Joint Motion to
`Terminate Proceedings (“Joint Motions”). Paper 5. 2 In support of the Joint
`Motions, the Parties filed copies of a written “CONFIDENTIAL
`SETTLEMENT AND LICENSE AGREEMENT” (“Settlement
`Agreements”). IPR2023-01260, Ex. 2001; IPR2023-01261, Ex. 2001;
`IPR2023-01262, Ex. 2001. In each preliminary proceeding, the Parties also
`filed a Joint Motion to File Settlement Agreement as Business Confidential
`Information Pursuant to 35 U.S.C. § 317 (“Joint Requests”). Paper 6.
`
`II. DISCUSSION
`In the Joint Motions, the Parties jointly request that these inter partes
`review proceedings be terminated based on their settlement with respect to
`the patents involved in the proceedings. Joint Motions 1. The Parties
`represent that they have resolved their disputes with respect to the involved
`patents, they have executed an agreement to request termination of these
`proceedings, the filed copies of the Settlement Agreements are true and
`correct copies, and there are no other agreements, oral or written, made in
`connection with, or in contemplation of, the termination of these
`proceedings. Id. at 2–3.
`
`
`2 For purposes of expediency, we refer to the joint motion and request filed
`in IPR2023-01260. The Parties filed similar papers in each of the other
`proceedings captioned above.
`
`2
`
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`
`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, the proceedings are at an early stage, and we
`have not yet decided whether to institute a trial in the proceedings. In view
`of the early stage of the proceedings and the settlement between the Parties,
`termination of the proceedings is appropriate.
`For at least these reasons, we agree that good cause exists and that it is
`appropriate to dismiss the petitions and terminate the preliminary
`proceedings without rendering a decision on institution or a final written
`decision. See 37 C.F.R. § 42.74.
`The Parties also requested that the Settlement Agreements be filed as
`business confidential information and be kept separate from the files of the
`patents involved in these proceedings. Joint Requests 2. After reviewing
`the Settlement Agreements, we find that the Settlement Agreements contain
`confidential business information regarding the terms of settlement. Thus,
`we determine that good cause exists to treat the Settlement Agreements as
`business confidential information under 37 C.F.R. § 42.74(c), to keep them
`separate from the files of the involved patents and associated preliminary
`proceedings, and to limit their availability pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`
`3
`
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`
`ORDERED that the Joint Motions to Terminate Proceedings are
`granted and the proceedings are terminated; and
`FURTHER ORDERED that the Joint Requests to treat the Settlement
`Agreements as Business Confidential Information Pursuant to 35 U.S.C.
`§ 317 are granted, and the Settlement Agreements shall remain designated
`as “Parties and Board Only” in Board’s filing system, shall be 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, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`4
`
`
`
`IPR2023-01260 (Patent 7,796,512 B2)
`IPR2023-01261 (Patent 8,045,531 B2)
`IPR2023-01262 (Patent 8,270,384 B2)
`
`For PETITIONER:
`
`Patrick McPherson
`Patrick Muldoon
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`pcmuldoon@duanemorris.com
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Jonathan Tsao
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`jonathan.tsao@ascendalaw.com
`
`
`
`5
`
`
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