Facebook, Inc.

Patent Trials and Appeals BoardJul 17, 2020

IPR2019-01598 (P.T.A.B. Jul. 17, 2020)

Trials@uspto.gov Paper 18 Tel: 571-272-7822 Entered: July 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BLACKBERRY CORP., Petitioner v. FACEBOOK, INC., Patent Owner Case IPR2019-01597 (Patent 6,744,759 B1) Case IPR2019-01598 (Patent 7,302,698 B1) Before MIRIAM L. QUINN, SCOTT C. MOORE, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. TERMINATION Due to Settlement after Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 Case IPR2019-01597 (Patent 6,744,759 B1) Case IPR2019-01598 (Patent 7,302,698 B1) 2 Petitioner, Blackberry Corp., and Patent Owner, Facebook Inc., jointly request to terminate the above-captioned cases. IPR2019-01597, Paper 18; IPR2019-01598, Paper 15 (“Motions”).1 With the Motions, the parties filed what they indicate is a true and correct copy of a written settlement agreement. IPR2019-01597, Ex. 1023; IPR2019-01598, Ex. 1013 (“Settlement Agreement”). The parties also filed a joint request to have the Settlement Agreement treated as business confidential information under 37 C.F.R. § 42.74(c). IPR2019-01597, Paper 19; IPR2019-01598, Paper 16. The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits.” See Patent Trial and Appeal Board Consolidated Trial Practice Guide 86 (Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated (citing 35 U.S.C. §§ 317(a), 327). Here, we have not decided the merits of these proceedings, and the parties represent that “the settlement agreement completely resolves the dispute between the parties with respect to the” patents challenged in each proceeding. IPR2019-01597, Paper 18, 3; IPR2019-01598, Paper 15, 3. Under the circumstances, it is appropriate to terminate these proceedings. See 37 C.F.R. § 42.71(a). We have reviewed the Settlement Agreement between Petitioner and Patent Owner. Because the Settlement Agreement contains business confidential information about the settlement terms, it is appropriate to treat the Settlement Agreement as business confidential information under 37 C.F.R. § 42.74(c). 1 The parties filed substantially the same motion in both cases. Case IPR2019-01597 (Patent 6,744,759 B1) Case IPR2019-01598 (Patent 7,302,698 B1) 3 This Order does not constitute a final written decision under 35 U.S.C. § 318(a). ORDER It is ORDERED that the joint motions to terminate in IPR2019-01597 and IPR2019-01598 are granted; FURTHER ORDERED that the proceedings are terminated; and FURTHER ORDERED that the joint requests that the Settlement Agreement (IPR2019-01597, Ex. 1023; IPR2019-01598, Ex. 1013) be treated as business confidential information, to be kept separate from the patent files under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted. Case IPR2019-01597 (Patent 6,744,759 B1) Case IPR2019-01598 (Patent 7,302,698 B1) 4 For PETITIONER: Robert C. Mattson MATTSON IP PLC rmattson@mattsonip.com Timothy Maier Christopher Maier MAIER & MAIER, PLLC tjm@maierandmaier.com cjm@maierandmaier.com For PATENT OWNER: Heidi L. Keefe Andrew C. Mace COOLEY LLP hkeefe@cooley.com amace@cooley.com