`571.272.7822
`
`
`Paper 29
`Entered: June 14, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00727
`Patent 6,628,629 B1
`_______________
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting the Parties’ Joint Motion to Terminate Proceeding
`35 U.S.C. § 317; 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`Case IPR2018-00727
`Patent 6,628,629
`
`
`I. DISCUSSION
`Pursuant to authorization by the Board, the parties filed the following:
`(1) a Joint Motion to Terminate Proceeding (Paper 26); (2) a true copy of the
`parties’ settlement agreement (Paper 271); and (3) a joint request to treat the
`settlement agreement as business confidential information, and to keep
`separate from the file of the involved patent, under 37 C.F.R. § 42.74(c)
`(Paper 28).
`Oral argument has not been held, and a final written decision has not
`been entered. In the Joint Motion to Terminate Proceeding, the parties
`indicate that they have settled all their disputes in this proceeding, and have
`agreed to terminate the proceeding. Paper 26, 3. The parties also “jointly
`certify that there are no other written or oral agreements or understandings,
`including any collateral agreements, between them, including but not limited
`to licenses, covenants not to sue, confidentiality agreements, payment
`agreements, or other agreements of any kind, that are made in connection
`with or in contemplation of, the termination of this proceeding.” Id. at 4.
`Under these particular circumstances, we determine that it is appropriate to
`terminate the proceeding without rendering a final written decision.
`See 35 U.S.C. § 317; 37 C.F.R. § 42.72. We also have reviewed the true
`copy of the parties’ settlement agreement, and we determine that good cause
`
`
`1 The parties filed the true copy of their settlement agreement as a paper,
`rather than as a separate exhibit. The parties should have filed the true
`copy of their settlement agreement as a separate exhibit in accordance with
`37 C.F.R. § 42.63(a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things. All evidence must be filed in the form
`of an exhibit.”).
`
`
`
`2
`
`
`
`Case IPR2018-00727
`Patent 6,628,629
`
`exists to treat this settlement agreement as business confidential information,
`and keep it separate from the file of the involved patent, under 37 C.F.R.
`§ 42.74(c).
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request to treat the true copy of their
`settlement agreement (Paper 28) as business confidential information, and to
`keep separate from the file of the involved patent, under 37 C.F.R.
`§ 42.74(c) is granted; and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate
`Proceeding (Paper 26) is granted, and the proceeding is terminated.
`
`
`
`3
`
`
`
`Case IPR2018-00727
`Patent 6,628,629
`
`For PETITIONER:
`
`Brian Oaks
`Megan LaDriere
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`megan.ladriere@bakerbotts.com
`
`For PATENT OWNER:
`
`Peter McAndrews
`Sharon Hwang
`Andrew Karp
`Gregory Schodde
`McANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`shwang@mcandrews-ip.com
`akarp@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`
`
`Russell Rigby
`Tim Seeley
`James Hietala
`INTELLECTUAL VENTURES MANAGEMENT
`rrigby@intven.com
`tims@intven.com
`jhietala@intven.com
`
`
`
`
`
`
`
`4
`
`
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