`Tel: 571.272.7822
`
`Paper 21
`Entered: November 26, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, AND WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00925
`Patent 8,209,634 B21
`____________
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Termination of Snap Inc. Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`1 Snap Inc. filed a petition and a motion for joinder in IPR2019-00938, both
`of which have been granted. Therefore Snap Inc. has been joined as a
`petitioner to IPR2019-00935. Snap Inc., however, as detailed below, is
`being terminated as a party to this proceeding.
`
`
`
`IPR2019-00925
`Patent 8,209,634 B2
`
`
`Joint Petitioner, Snap Inc. (“Snap”), and Patent Owner, Blackberry
`Limited (“Blackberry”), jointly move to terminate the instant inter partes
`review with respect to Snap in light of the settlement that resolves their
`dispute regarding U.S. Patent No. 8,209,634 B2. Paper 12. Snap and
`Blackberry also filed a true copy of their written settlement agreement in
`connection with the termination as required by 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(b). Ex. 1126. Pursuant to 37 C.F.R. § 42.74(c), the parties
`further filed a joint request to treat the Settlement Agreement as business
`confidential information kept separate from the file of the involved patent.
`Paper 13.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to Snap, and the Joint Request to File Settlement Agreement as
`Business Confidential Information are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An 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 termination is filed. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`Here, although inter partes review has been instituted, the proceeding
`is ongoing with the remaining Petitioner entities: Facebook, Inc., Instagram,
`LLC, and Whatsapp Inc. Upon review of the procedural posture of this
`proceeding and the facts before us, we determine that it is appropriate to
`
`2
`
`
`
`IPR2019-00925
`Patent 8,209,634 B2
`
`terminate this proceeding with respect Snap. The proceeding, however, will
`not be terminated with respect to the remaining Petitioner entities identified
`above and Blackberry.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to Snap,
`is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Snap only; but this review continues to proceed with Blackberry and
`remaining Petitioner;
`FURTHER ORDERED that IPR2019-00938 is hereby terminated and
`closed;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it 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), is granted.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00925
`Patent 8,209,634 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`Yar Chaikovsky
`David Okano
`PAUL HASTINGS LLP
`yarchaikovsky@paulhastings.com
`davidokano@paulhastings.com
`
`PATENT OWNER:
`
`Michael T. Hawkins
`Nicholas Stephens
`Kenneth W. Darby
`Craig A. Deutsch
`Kim Leung
`FISH & RICHARDSON
`hawkins@fr.com
`nstephens@fr.com
`kdarby@fr.com
`deutsch@fr.com
`leung@fr.com
`
`Sam Stake
`Thao Thai
`Nien-Ping Wang
`James M. Glass
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`samstake@quinnemanuel.com
`thaothai@quinnemanuel.com
`ianwang@quinnemanuel.com
`jimglass@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`
`4
`
`
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