Intellectual Ventures II LLC

Patent Trials and Appeals BoardJan 26, 2021

IPR2020-01081 (P.T.A.B. Jan. 26, 2021)

Trials@uspto.gov Paper 18 571.272.7822 Entered: January 26, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ VMWARE, INC., Petitioner, v. INTELLECTUAL VENTURES II LLC, Patent Owner. ____________ IPR2020-01081 Patent RE44,818 E1 ____________ Before DAVID C. McKONE, JOHN A. HUDALLA, and JOHN D. HAMANN, Administrative Patent Judges. HUDALLA, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-01081 Patent RE44,818 E1 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively “the Parties”) filed an amended1 joint motion to withdraw the Petition. Paper 17 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a written confidential settlement agreement. Exs. 1044, 1045 (collectively, “Settlement Agreement”). The Parties also filed an amended joint request to treat the Settlement Agreement as business confidential information and to keep it separate from the files of the challenged patent. Paper 18 (“Joint Request”). II. DISCUSSION 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. Joint Motion 1. The Parties state that the Settlement Agreement is “a true copy of any agreement or understanding . . . 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.” Id. Accordingly, the Parties jointly request termination of this proceeding. Id. at 2. 1 The Parties originally filed a joint motion (Paper 15) to withdraw the Petition and a joint request (Paper 16) to treat the settlement agreement (Ex. 1044) as business confidential information and to keep it separate from the files of the challenged patent. Having reviewed the version of the settlement agreement filed with those papers, we determined that it references a “Schedule 1” and a “Schedule 2,” but it did not include those schedules. On January 25, 2021, Judges McKone, Hudalla, and Hamann held a teleconference with counsel for the parties to discuss the missing schedules. The Parties susquently filed the amended papers (Papers 17, 18) and the missing schedules (Ex. 1045). IPR2020-01081 Patent RE44,818 E1 3 There are strong public policy reasons to favor settlement between the parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg. 64,280 (Nov. 21, 2019). The proceeding is in its preliminary phase, and we have not yet decided whether to institute a trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine that it is appropriate to dismiss the petition and terminate the proceeding as to the Parties, without rendering a decision on institution or a final written decision. In the Joint Request, the Parties jointly request to treat the Settlement Agreement as business confidential information and to have it be kept separate from the files of the challenged patent and associated proceeding. Joint Request 1. After reviewing the Settlement Agreement between the Parties, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine the Settlement Agreement (Exs. 1044, 1045) between the Parties 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. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, it is: ORDERED that the amended joint motion to withdraw the Petition (Paper 17) is granted; IPR2020-01081 Patent RE44,818 E1 4 FURTHER ORDERED that the above-captioned proceeding is terminated and the petition is dismissed; and FURTHER ORDERED that the amended joint request to treat the Settlement Agreement as business confidential information (Paper 18) is granted, and the Settlement Agreement (Exs. 1044, 1045) 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). IPR2020-01081 Patent RE44,818 E1 5 For PETITIONER: Katherine A. Vidal Michael A. Tomasulo Louis L. Campbell WINSTON & STRAWN LLP kvidal@winston.com mtomasulo@winston.com llcampbell@winston.com For PATENT OWNER: Byron L. Pickard Daniel S. Block Christopher O’Brien James R. Hietala STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. bpickard-PTAB@sternekessler.com dblock-PTAB@sternekessler.com COBrien-PTAB@sternekessler.com JHietala@sternekessler.com Russell J. Rigby INTELLECTUAL VENTURES rrigby@intven.com