`Tel: 571-272-7822
`
`Paper 21
`Entered: April 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SERVICENOW,INC.,
`Petitioner,
`
`V.
`
`BMC SOFTWARE,INC.,
`Patent Owner.
`
`Case IPR2015-01176 (Patent 5,978,594)
`Case IPR2015-01211 (Patent 7,617,073 B2)
`Case IPR2015-01631 (Patent 8,674,992 B2)
`Case CBM2015-00170 (Patent 8,646,093 B2)
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY,and
`JOHN A. HUDALLA,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`ORDER
`Termination of the Proceedings
`37 CER. § 42.72
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`IPR2015-01631 (Patent 8,674,992 B2)
`CBM2015-00170 (Patent 8,646,093 B2)
`
`On April 26, 2016, the parties filed, in each of the instant proceedings,
`
`a joint motion to terminate the proceeding onthe basis of a settlement
`
`reached bythe parties. See 35 U.S.C. § 317(a); 35 U.S.C. § 327(a);
`
`37 C.F.R. § 42.72. The parties also filed a copy of their written settlement
`
`agreement and included in each motion a request that the settlement
`
`agreementbe treated as business confidential information under 35 U.S.C.
`§ 317(b), 35 U.S.C. § 327(b), and 37 C.F.R. § 42.74(c).!
`
`The parties’ joint motions to terminate werefiled prior to the oral
`
`hearings in these cases, and the Board has not madea final decision on the
`
`merits in any of the proceedings. See 35 U.S.C. § 317(a); 35 U.S.C.
`
`§ 327(a). The parties represent that they “agreedtosettle their respective
`
`claims against each other’ in two related district court cases and in a related
`
`Germancase, and that they “have now movedto dismiss all previously
`
`pending matters between them.” Paper 19, 2-3. The parties further
`
`representthat “there is no otherlitigation involving the challenged
`patent[s].” Jd. at 3. Given these facts, we determinethat it is appropriate to
`terminate the proceedings, without rendering a final written decision, under
`
`37 C.F.R. § 42.72. The oral hearingsin all of the instant proceedingsare
`
`canceled.
`
`! See Case IPR2015-01176, Paper 19, Ex. 2025; Case IPR2015-01211,
`Paper 20, Ex. 2006; Case IPR2015-01631, Paper 17, Ex. 2005; Case
`CBM2015-00170, Paper 12, Ex. 2004. Because the papers are nearly
`identical in each proceeding, we will refer to those filed in Case
`IPR2015-01176 for convenience. Weauthorized the joint motionsto
`terminate in an email dated April 15, 2016.
`
`2
`
`
`
`IPR2015 01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`IPR2015-01631 (Patent 8,674,992 B2)
`CBM2015-00170 (Patent 8,646,093 B2)
`
`“At the request of a party to the proceeding, the [settlement]
`
`agreement or understanding shall be treated as business confidential
`
`information, shall be kept separate from thefile of the involved patents, and
`
`shall be made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause.” 35 U.S.C. §§ 317(b),
`
`327(b). After reviewing the parties’ settlement agreement, wefind that the
`
`settlement agreement contains confidential business information regarding
`
`the terms of settlement. We determine that good causeexists to treat the
`
`settlement agreement as business confidential information pursuantto
`
`35 U.S.C. §§ 317(b) and 327(b).
`
`In consideration of the foregoing, it is hereby:
`
`ORDEREDthatthe parties’ joint request to treat their settlement
`
`agreement (Case IPR2015-01176, Ex. 2025; Case IPR2015-01211,
`
`Ex. 2006; Case IPR2015-01631, Ex. 2005; Case CBM2015-00170,
`
`Ex. 2004) as business confidential information under 35 U.S.C. § 317(b), 35
`
`U.S.C. § 327(b), and 37 C.F.R. § 42.74(c) and to continue its designation as
`
`“Board Only” in PRPSis granted;
`
`FURTHER ORDEREDthatthe parties’ settlement agreement be kept
`
`separate from the files of U.S. Patent No. 5,978,594, U.S. Patent No.
`
`7,617,073 B2, U.S. Patent No. 8,674,992 B2, and U.S. Patent No.
`
`8,646,093 B2, and made available only to Federal Government agencies on
`
`written request, or to any person on a showing of good cause; and
`
`FURTHER ORDEREDthatthe joint motions to terminate the instant
`
`proceedings are granted and the proceedings are hereby terminated.
`
`
`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`IPR2015-01631 (Patent 8,674,992 B2)
`CBM2015-00170 (Patent 8,646,093 B2)
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark Weinstein
`COOLEY LLP
`hkeete@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`zpatdcdocketing@cooley.com
`
`PATENT OWNER:
`
`Rohert A.. Cate
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`MCKOOL SMITIIT.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`
`
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