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Palo Alto Networks, Inc. v. Proven Networks, LLC

Docket IPR2021-00596, Patent Trial and Appeal Board (Mar. 4, 2021)
John Hudalla, Patrick Boucher, Trevor Jefferson, presiding
Case TypeInter Partes Review
Patent8018852
Patent Owner Proven Networks, LLC
Petitioner Palo Alto Networks, Inc.
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10 Refund Approval: Notice of Refund

Document IPR2021-00596, No. 10 Refund Approval - Notice of Refund (P.T.A.B. Aug. 20, 2021)
Petitioner’s request for a refund of certain post-institution fees paid on March 4, 2021, in the above proceeding is hereby granted.
The amount of $ $22,500.00 has been refunded to Petitioner’s deposit account.
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 Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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8 Termination Decision Document: Termination Decision Document

Document IPR2021-00596, No. 8 Termination Decision Document - Termination Decision Document (P.T.A.B. Aug. 10, 2021)
In support of the Joint Motion, the Parties filed a copy of a Settlement Agreement between Petitioner and Patent Owner.
In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek withdrawal of the Petition filed in this inter partes review proceeding, and that the filed copy of the Settlement Agreement is a true and complete copy.
The Parties further represent their disputes involving U.S. Patent 8,018,852, including both in this proceeding and in the related District Court litigations, have been resolved.
We determine that good cause exists to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37
Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Withdraw Petition is granted, the Petition in IPR2021-00596 is dismissed, and the proceeding is terminated; FURTHER ORDERED that the Joint Request that the Settlement Agreement be Treated as Business Confidential Information is granted, and the Settlement Agreement shall be kept separate from the files of U.S. Patent No. 8,018,852 and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
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8 Settlement Before Institution: DECISIONSettlement Prior to Institution of Trial

Document IPR2021-00596, No. 8 Settlement Before Institution - DECISIONSettlement Prior to Institution of Trial (P.T.A.B. Aug. 10, 2021)
In support of the Joint Motion, the Parties filed a copy of a Settlement Agreement between Petitioner and Patent Owner.
In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek withdrawal of the Petition filed in this inter partes review proceeding, and that the filed copy of the Settlement Agreement is a true and complete copy.
The Parties further represent their disputes involving U.S. Patent 8,018,852, including both in this proceeding and in the related District Court litigations, have been resolved.
We determine that good cause exists to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37
Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Withdraw Petition is granted, the Petition in IPR2021-00596 is dismissed, and the proceeding is terminated; FURTHER ORDERED that the Joint Request that the Settlement Agreement be Treated as Business Confidential Information is granted, and the Settlement Agreement shall be kept separate from the files of U.S. Patent No. 8,018,852 and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2021-00596, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Mar. 17, 2021)
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.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2021-00596 Patent 8,018,852 B2 mediation, etc.) was used and the general result.
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7 Other Not for motions: Joint Motion to Keep Settlement Confidential

Document IPR2021-00596, No. 7 Other Not for motions - Joint Motion to Keep Settlement Confidential (P.T.A.B. Jul. 21, 2021)
Case No. IPR2021-00596 U.S. Patent No. 8,018,852 Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner Palo Alto Networks, Inc. (“Petitioner”) and Patent Owner Proven Networks, LLC (“Patent Owner”) hereby jointly request that a true copy of their settlement agreement, filed concurrently herewith as Exhibit 1031 be treated as business confidential information and be kept separate from the file for this inter partes review (“IPR”) proceeding.
Concurrently with the filing of this Request, Petitioner and Patent Owner are filing a Joint Motion to Withdraw the Petition for IPR due to the settlement between the parties.
As such, the parties hereby jointly request that the settlement agreement be kept as a separate paper to be made available only under the provisions of 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c).
The settlement agreement has been filed for access by the “Parties and Board Only.” The parties further jointly request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon the parties on the day the written request is provided to the Board.
/Reza Mirzaie/ Reza Mirzaie (Reg. No. 69,138) C. Jay Chung (Reg. No. 71,007) Attorneys for Patent Owner Proven Networks,
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6 Motion: Joint Motion to Withdraw Petition

Document IPR2021-00596, No. 6 Motion - Joint Motion to Withdraw Petition (P.T.A.B. Jul. 21, 2021)
Hist.”) Declaration of Prashant Shenoy, Ph.D. in Support of Petition for Inter Partes Review of U.S. Patent No. 8,018,852 Curriculum Vitae of Prashant Shenoy, Ph.D. U.S. Patent No. 6,775,280 to Ma et al. (“Ma1”) “Quality-of-Service Routing in Integrated Services Networks,” by Qingming Ma, published May, 1999 (although dated January, 1998), Carnegie Mellon University, Pittsburgh, Pa., CMU-CS-98- 138 (“Ma2”) U.S. Patent No. 6,788,647 to Mohaban et al. Complaint, Proven Networks, LLC v. Microsoft Corporation, 6- 21-cv-00022 (W.D.
Petitioner and Patent Owner submit a true copy of any agreement or understanding (Exhibit 1031) between Petitioner and Patent Owner made in connection with, or in contemplation of, the withdrawal of the Petition for 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 joint motion to withdraw the Petition; (ii) a true copy of any agreement or understanding (Exhibit 1031) between Petitioner and Patent Owner made in connection with, or in contemplation of, the requested withdrawal of the Petition; and (iii) a joint request to treat the agreement as business confidential information and keep the agreement (Exhibit 1031) 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.
/Reza Mirzaie/ Reza Mirzaie (Reg. No. 69,138) C. Jay Chung (Reg. No. 71,007) Attorneys for Patent Owner Proven Networks,
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2 Petition: Petition for Inter Partes Review

Document IPR2021-00596, No. 2 Petition - Petition for Inter Partes Review (P.T.A.B. Mar. 4, 2021)
One such reference is Ma1 (EX1005), which describes a method for selecting a single port to route data based on network topology, QoS policy, and Inter Partes Review of U.S. Patent No. 8,018,852 network-efficiency information.
Inter Partes Review of U.S. Patent No. 8,018,852 Therefore, a POSA would have been motivated to use link state advertisement routers described in Ma2 to exchange routing information to Ma1’s communications device.
Inter Partes Review of U.S. Patent No. 8,018,852 To any extent Ma1 does not disclose retaining the network address associated with the inbound flow, a POSA would have been motivated to combine Ma1 with Mohaban because Ma1 would rely on the widely known method of using the information in the 5-tuple to identify whether a packet from the same conversation has been routed recently.
To any extent it is argued that Ma1 does not disclose network address source learning, a POSA would have been motivated to incorporate Mohaban to use the “5-tuple” stored in a table to determine whether an inbound flow belongs to a previously established packet stream.
To any extent it is argued that Ma1 does not disclose monitoring for an inbound flow, a POSA would have been motivated to incorporate the link state advertisement routers described in Ma2 to provide updated network-topology information to the data-communications device.
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