`Tel: 571-272-7822
`
`Paper No. 21
`Entered: October 30, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner,
`
`V.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK,and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial and
`Granting Jomt Request to Keep Settlement Agreement
`Business Confidential and Separate
`35 U.S.C. § 317; 37 CFR. $ 42.74
`
`
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`I.
`
`INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`
`(collectively, “the Parties’) filed a Joint Motion to terminate this proceeding.
`
`Paper 19 (“Joint Motion”). Along with the Joint Motion, the Parties filed a
`
`copy of a settlement agreement. Ex. 2015 (“Settlement Agreement”). The
`
`Parties also filed a Joint Request to treat the Settlement Agreement as
`
`business confidential information and keep it separate from thefile of U.S.
`
`Patent No. 8,495,242 B2 (“the ’242 patent’’). Paper 20 ( “Joint Request’).
`
`Il.
`
`DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for terminationis filed.”
`
`35 U.S.C. § 317(a) also provides that if no petitioner remainsin the inter
`
`partes review, the Office may terminate the review.
`
`In the Joint Motion, the Parties represent that the Settlement
`
`Agreementresolves their underlying dispute involving the 272 patent. Joint
`
`Motion 1. The Parties represent that they havefiled a true copy of the
`
`Settlement Agreement made in connection with, or in contemplation of, the
`
`termination of this proceeding.
`
`/d. at 3. The Parties representthat “[t]here
`
`are no collateral agreements or understandings made in connection with, or
`
`in contemplation of, the termination of this inter partes review.” Id.
`
`Weinstituted trial in the instant proceeding on July 21, 2023. See
`
`Paper 15. We havenot yet decided the merits of the proceeding, anda final
`
`written decision has not been entered. Notwithstanding that the instant
`
`proceeding has moved beyondthe preliminary stage, the Parties have shown
`
`
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`adequately that termination of the proceeding is appropriate. Under these
`
`circumstances, we determine that good cause exists to terminate this inter
`
`partes review proceeding with respect to the Parties.
`
`The Parties also request that the Settlement Agreementbe treated as
`
`business confidential information and kept separate from thefile of the ’272
`
`patent. Joint Request 1. After reviewing the Settlement Agreement, we find
`
`that it contains confidential business information regarding the terms of
`
`settlement. Thus, good cause exists to treat the Settlement Agreement as
`
`business confidential information 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 pursuantto
`
`35 U.S.C. § 318(a).
`
`Accordingly,it is:
`
`Il.
`
`ORDER
`
`ORDEREDthat the Joint Motion to terminate (Paper 19) 1s granted,
`
`and IPR2023-00330 is terminated with respect to Petitioner and Patent
`
`Owner; and
`
`FURTHER ORDEREDthat the Joint Requestto treat the Settlement
`
`Agreementas business confidential information (Paper 20) is granted; and
`
`FURTHER ORDEREDthat the Settlement Agreement (Ex. 2015)
`
`shall be kept separate from the file of U.S. Patent No. 8,495,242 B2, and
`
`made available only to Federal Governmentagencies on written request, or
`
`to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c).
`
`
`
`IPR2023-00330
`Patent 8,495,242 B2
`
`For PETITIONER:
`
`James Davis
`Daniel Richards
`ROPES & GRAY LLP
`James.l.davis@ropesgray.com
`Daniel.richards@ropesgray.com
`
`For PATENT OWNER:
`
`Christopher Bovenkamp
`CHARHON CALLAHAN ROBSON & GARZA, P.L.L.C.
`cbovenkamp@ccrglaw.com
`
`Ararat Kapouytian
`MAURIEL KAPOUYTIAN WOODS LLP
`akapouytian@mkwillp.com
`
`Jason Fitzsimmons
`Richard Bemben
`Michael Specht
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`mspecht-ptab@sternekessler.com
`
`
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