`Tel: 571-272-7822
`
`Paper 23
`Entered: July 24, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`BARKAN WIRELESS IP HOLDINGS, L.P.,
`Patent Owner.
`
`IPR2018-01659
`IPR2019-00100
`Patent 8,014,284 B2
`
`
`
`Before MEREDITH C. PETRAVICK and WILLIAM V. SAINDON,
`Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting Updated Joint Motion to Terminate Proceedings
`Due to Settlement after Institution and
`Granting Joint Request to Treat Settlement Agreements as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`Cases IPR2018-01659 and IPR2019-00100
`Patent 8,014,284 B2
`
`
`We instituted inter partes review in IPR2018-01659 with a Decision
`dated March 27, 2019. IPR2018-01659, Paper 10. In a Decision dated May
`1, 2019, the we instituted inter partes review in IPR2019-00100 and joined
`the proceeding with IPR2018-01659. IPR2018-01659, Paper 12.
`On May 31, 2019, with our authorization, the Parties filed a Joint
`Motion to Terminate Under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`(IPR2018-01659, Paper 15; IPR2019-00100, Paper 15) and included a copy
`of a signed agreement relating to settlement (IPR2018-01659, Ex. 2014;
`IPR2019-00100, Ex. 2020). On July 7, 2019, the Parties filed an Updated
`Joint Motion to Terminate (IPR2018-01659, Paper 21) and included
`countersigned copies of an additional agreement relating to settlement and
`termination of these proceedings (IPR2018-01659, Exs. 2015, 2016). The
`Parties also filed joint requests to treat the settlement agreements as business
`confidential information. IPR2018-01659, Paper 16, 22; IPR2019-00100,
`Paper 16.
`The Parties assert that they have “executed a binding settlement
`agreement as part of a mediation that finally resolves all claims against each
`other” and that Petitioner has agreed to terminate its IPR petition. IPR2018-
`01659, Paper 21, 1; IPR2019-00100, Paper 15, 1. The Parties jointly certify
`that the settlement agreements filed constitute all agreements or
`understandings made in connection with termination of this proceeding.
`IPR2018-01659, Paper 21, 2.
`
`
`ANALYSIS
`Under 35 U.S.C. § 317(a), an inter partes review shall be terminated
`with respect to any petitioner upon the joint request of the petitioner and
`
`2
`
`
`
`
`
`Cases IPR2018-01659 and IPR2019-00100
`Patent 8,014,284 B2
`
`patent owner unless the Board has decided the merits of the proceeding
`before the request for termination. In addition, § 317(b) requires that any
`agreement or understanding between the patent owner and petitioner made
`in connection with or in contemplation of termination of an inter partes
`review shall be in writing and filed with the Office before termination of the
`inter partes review. Accord 37 C.F.R. § 42.74(b). We determine that the
`Parties’ Updated Joint Motion to Terminate satisfies the requirements of
`§ 317(b).
`These proceedings are in preliminary stages, and we have not yet
`reached a final determination on the merits or entered a final written
`decision. The Parties’ Updated Joint Motion to Terminate states that the
`Parties “jointly certify that they have now filed all agreements or
`understandings, . . . between the Parties that are made in connection with
`termination of this proceeding” and “that no other written or oral agreements
`or understandings, including any collateral agreements, are made in
`connection with, or in contemplation of, the termination of these
`proceedings.” IPR2018-01659, Paper 21 at 2–3.
`Based on the circumstances here, we determine that it is appropriate to
`terminate these proceedings without rendering any further decisions. See 37
`C.F.R. § 42.71(a). We have also reviewed the Parties’ agreements
`(IPR2018-01659, Exs. 2014, 2015, 2016; IPR2019-006100, Ex. 2020), and
`we determine that good cause exists to treat these agreements as business
`confidential information under 37 C.F.R. § 42.74(c).
`
`
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`3
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`
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`
`
`Cases IPR2018-01659 and IPR2019-00100
`Patent 8,014,284 B2
`
`
`ORDER
`In view of the foregoing, it is hereby:
`ORDERED that the Parties’ joint requests for termination are granted;
`IPR2018-01659 is terminated as to Petitioner Cellco Partnership d/b/a
`Verizon Wireless and Samsung Electronics America, Inc., and IPR2019-
`00100 is terminated as to Petitioner Samsung Electronics America, Inc.
`pursuant to 37 C.F.R. §§ 42.72, 42.74.; and
`FURTHER ORDERED that the Parties’ request to treat the Settlement
`Agreements as Business Confidential Information is granted, and the
`Settlement Agreements (IPR2018-01659, Exs. 2014, 2015, 2016; IPR2019-
`00100, Ex. 2020) shall be kept separate from the files of Patent 8,014,284
`B2 and made available only to Federal Government agencies 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).
`
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`4
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`
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`Cases IPR2018-01659 and IPR2019-00100
`Patent 8,014,284 B2
`
`
`
`PETITIONER:
`Kevin Anderson
`Scott Felder
`kanderson@wileyrein.com
`sfelder@wileyrein.com
`
`PATENT OWNER:
`Douglas Wilson
`Michael Heim
`dwilson@hpcllp.com
`mheim@hpcllp.com
`
`
`
`5
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`