BlackBerry Limited

Patent Trials and Appeals BoardMar 23, 2021

IPR2021-00157 (P.T.A.B. Mar. 23, 2021)

Trials@uspto.gov Paper No. 13 571-272-7822 Entered: March 23, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MOBILEIRON, INC., Petitioner, v. BLACKBERRY LIMITED, Patent Owner. ____________ IPR2021-00157 Patent 9,270,682 B2 ____________ Before MIRIAM L. QUINN, STACY B. MARGOLIES, and AARON W. MOORE, Administrative Patent Judges. QUINN, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00157 Patent 9,270,682 B2 I. INTRODUCTION On March 9, 2021, following Board authorization via e-mail on March 3, 2021, the parties filed a Joint Motion to terminate this proceeding. Paper 11 (“Mot.”). Along with the Joint Motion, the parties filed, as Exhibit 1055, a copy of a “Confidential Settlement Agreement” that they describe as “a true copy of [the] settlement agreement entered between the Parties.” Mot. 2.1 According to the parties, the “settlement agreement is the only agreement or understanding between Petitioner and Patent Owner made in connection with, or in contemplation of terminating this proceeding.” Id. at 3. The parties also filed a Joint Request to treat the agreement as business confidential information, and to maintain the agreement separate from the public file under 37 C.F.R. § 42.74(c). Paper 12. II. DISCUSSION On November 2, 2020, Petitioner filed a Petition requesting an inter partes review of claims 1–31 of U.S. Patent No. 9,270,682. Paper 2. The proceeding is still in its preliminary stages and we have not entered a decision on whether to institute an inter partes review. In the Joint Motion, the Parties represent that the “settlement agreement was entered into in contemplation of terminating this proceeding.” Mot. 3; see also Ex. 1055, § 3.3. The parties also state that they have settled all disputes relating to the challenged patent. Mot. 3. 1 The Settlement Agreement is between Blackberry Limited (Patent Owner) and Ivanti, Inc. As noted in Petitioner’s updated Mandatory Notices, filed on January 5, 2021, “Ivanti, Inc. publicly announced that it has acquired Petitioner.” Paper 7, 1. IPR2020-00157 Patent 9,270,682 B2 In view of the early stage of this proceeding and the settlement between the parties, we determine that good cause exists to terminate the proceeding. We also have reviewed the settlement agreement, and we determine that it contains business confidential information regarding the terms of the settlement, and that good cause exists to treat it as business confidential information under 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER In consideration of the foregoing, it is hereby ORDERED that the parties’ Joint Request (Paper 12) to treat the settlement agreement (Exhibit 1055) as business confidential information under 37 C.F.R. § 42.74(c) is granted, and that Ex. 1055 shall be kept separate from the files of U.S. Patent 9,270,682, 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); and FURTHER ORDERED that the parties’ Joint Motion to Terminate (Paper 11) is granted, and that this proceeding is terminated. IPR2020-00157 Patent 9,270,682 B2 PETITIONER: Parrish Freeman Eric Maschoff John Gadd David Call MASCHOFF BRENNAN pfreeman@mabr.com emaschoff@mabr.com jgadd@mabr.com dcall@mabr.com PATENT OWNER: Michael Hawkins Nicholas Stephens Christopher Hoff Andrew Dommer Patrick Bisenius Terry Stalford FISH AND RICHARDSON P.C. hawkins@fr.com nstephens@fr.com hoff@fr.com dommer@fr.com bisenius@fr.com stalford@fr.com