With the Board’s authorization, Petitioner and Patent Owner (collectively “the Parties”) filed an amended1 joint motion to terminate this inter partes review.

In the Joint Motion, the Parties state that they have resolved their disputes regarding the challenged patent, which include this proceeding and the related district court litigation.

On January 25, 2021, Judges McKone, Hudalla, and Hamann held a teleconference with counsel for the parties to discuss the missing schedules, in connection with related IPR2020-01081.

We determine the Settlement Agreement (Exs. 2020, 2021) shall be treated as business confidential information under 37 C.F.R. § 42.74(c) and shall be kept separate from the files of the challenged patent and associated proceeding.

FURTHER ORDERED that the amended joint request to treat the Settlement Agreement as business confidential information (Paper 22) is granted, and the Settlement Agreement (Exs. 2020, 2021) shall remain designated as “Parties and Board Only” in the Board’s filing system, shall made available only to Federal Government agencies on written request, or to any person on a showing of good cause, and shall be kept separate from the files of the involved patent and associated proceeding, pursuant to 37 C.F.R. § 42.74(c).

A conference call was held on December 9, 2020, among respective counsel for Petitioner and Patent Owner, and Judges McKone, Hudalla, and Hamann to discuss Petitioner’s identification of RPIs.

During the call, Petitioner indicated that it updated its identified RPIs prior to institution to correct a drafting error in its Petition.

Patent Owner conceded that it was not aware of any potential bar under 35 U.S.C. § 315(b) related to EMC Corporation and Dell Technologies Inc. that would have prevented institution of the instant inter partes review.

The parties jointly sought authorization to file the claim construction order and the transcript of the Markman hearing in this proceeding.

We grant the parties’ joint request for authorization to file the court’s claim construction order and the transcript of the Markman hearing as exhibits in this proceeding.

Petitioner acknowledges that Venkatesh Babu Chitlur Srinivasa also is an inventor for the ’818 patent, but nonetheless contends that the inventive entities of Srinivasa and the ’818 patent are different because “Vankatesh Babu Chitlur ...

... also have considered other portions of the Petition directed to Brown, Valenzuela, and the “HTB References” in general (see Pet. 8–11) and to Petitioner’s rationale for combining these references with Mehrotra (see Pet. 46–49), but none ...

This reference does not make sense, because none of the three asserted references in this ground is applied in the Srinivasa anticipation ground.

In stipulating to move any due dates in the scheduling order, the parties must be cognizant that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for ...

Granting Petitioner’s Motion for Pro Hac Vice Admission of Michael R. Rueckheim

VMware, Inc. (“Petitioner”) filed a Motion for Pro Hac Vice Admission of Michael R. Rueckheim.

Having reviewed the Motion and the Declaration, we conclude that Mr. Rueckheim has sufficient legal and technical qualifications to represent Petitioner in this proceeding and that Petitioner has shown good cause for Mr. Rueckheim’s pro hac vice admission.

It is ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of Michael R. Rueckheim is granted, and Mr. Rueckheim is authorized to represent Petitioner only as back-up counsel in this proceeding; FURTHER ORDERED that Petitioner is to continue to have a registered practitioner represent it as lead counsel in this proceeding;

FURTHER ORDERED that Mr. Rueckheim is to comply with the Office Patent Trial Practice Guide November 21, 2019, available at https://www.uspto.gov/TrialPracticeGuideConsolidated, and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and FURTHER ORDERED that Mr. Rueckheim shall be subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a) and the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101–11.901.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2020-00859 Patent No. RE44,818 E mediation, etc.) was used and the general result.

Petitioner and Patent Owner submit a true copy of any agreement or understanding (Exhibit 2020 and 2021) between Petitioner and Patent Owner made in connection with, or in contemplation of, the termination of the proceeding under 37 CFR § 42.74(b) with this joint motion.

As authorized by the Board, the parties are jointly and contemporaneously filing: (i) this amended joint motion to terminate the proceeding; (ii) a true copy of any agreement or understanding (Exhibits 2020 and 2021) between Petitioner and Case IPR2020-00859 U.S. Patent No. RE44,818 Patent Owner made in connection with, or in contemplation of, the requested termination; and (iii) an amended joint request to treat the agreements as business confidential information and keep the agreement (Exhibits 2020 and 2021) separate from the file of the involved patent, pursuant to 37 C.F.R. § 42.74(c).

Petitioner and Patent Owner jointly request that the Board terminate this proceeding in its entirety.

This paper complies with the general format requirements of 37 C.F.R. § 42.6 and has been prepared using Microsoft® Word 2016 in 14 point Times New Roman.

Christopher R. O’Brien (Reg. No. 63,208) Counsel for Patent Owner Date: January 28, 2021 1100 New York Avenue, N.W.