Digital Cache, LLC

Patent Trials and Appeals Board

Mar 1, 2022

IPR2022-00121 (P.T.A.B. Mar. 1, 2022)

Trials@uspto.gov Paper No. 8 571-272-7822 Entered: March 1, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PURE STORAGE, INC., Petitioner, v. DIGITAL CACHE, LLC, Patent Owner. IPR2022-00121 Patent 6,851,015 B2 Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and NABEEL U. KHAN, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2022-00121 Patent 6,851,015 B2 2 With the Board’s authorization, Petitioner, Pure Storage, Inc., and Patent Owner, Digital Cache, LLC, filed a joint motion to dismiss the above- identified proceedings due to a settlement. Paper 6 (“Mot.”). 3. The parties also filed a motion requesting that we treat their settlement agreement, filed with the joint motion, as business confidential information, to be kept separate from the files of these proceedings in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 7, 1; Mot. 1. This proceeding is in its earliest stages and the parties jointly represent that they have resolved their disputes regarding the challenged patent. Mot. 3. The parties provide a copy of their settlement agreement (Ex. 1017) and “certify that there are no other collateral agreements or understandings, oral or written, between the parties made in connection with, or in contemplation of, the termination of the present proceeding.” Mot. 3- 4. Under 37 C.F.R. § 42.71(a), the Board may “dismiss any petition.” Under these circumstances, we determine that it is appropriate to dismiss the Petition and terminate the case without rendering a decision on institution. We agree with the parties that the settlement agreement should be treated as business confidential information and kept separate from the files of the involved patent. 37 C.F.R. § 42.74. Therefore, the Joint Motion and request are granted. Accordingly, it is ORDERED that the Joint Motion to Dismiss is granted; FURTHER ORDERED that the parties’ joint request that the settlement agreement (Ex. 1017) be treated as business confidential IPR2022-00121 Patent 6,851,015 B2 3 information and kept separate from the files of the above-captioned proceeding is granted; and FURTHER ORDERED that this proceeding is terminated. IPR2022-00121 Patent 6,851,015 B2 4 For PETITIONER: Kyle Howard David O’Dell HAYNES BOONE kyle.howard.ipr@haynesboone.com david.odell.ipr@haynesboone.com For PATENT OWNER: Isaac Rabicoff RABICOFF LAW LLC isaac@rabilaw.com