Proven Networks, LLC

Patent Trials and Appeals BoardAug 10, 2021

IPR2021-00889 (P.T.A.B. Aug. 10, 2021)

Trials@uspto.gov Paper No. 9 571.272.7822 Entered: August 10, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MICROSOFT CORP., Petitioner, v. PROVEN NETWORKS, LLC, Patent Owner. ____________ IPR2021-00889 Patent 8,812,454 B2 ____________ Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and JOHN A. HUDALLA, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-00889 Patent 8,812,454 B2 2 On July 6, 2021, with the Board’s authorization, Microsoft Corp. (“Petitioner”) and Proven Networks, LLC (“Patent Owner”) (collectively referred to as “the Parties”) filed a Joint Motion to Terminate the above- identified proceeding due to settlement. Paper 7 (“Joint Motion”). In support of the Joint Motion, the Parties filed copies of: a Patent License and License Option Agreement between RPX Corporation and Proven Networks, LLC (Ex. 2001, “Patent License and License Option Agreement”); and a Release Agreement between Microsoft Corp. and Proven Networks LLC (Ex. 2002, “Release Agreement”) (collectively referred to as “Agreements”). In further support of the Joint Motion, the Parties also filed a Joint Request to Keep Separate. Paper 8 (“Joint Request”). In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of this inter partes review proceeding, and that the filed copies of the Agreements are true and complete copies. Joint Motion 1–2. The Parties further represent the dispute involving U.S. Patent 8,812,454 has been resolved. Id at 1. This proceeding is at an early stage, 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 good cause exists to terminate the proceeding with respect to the Parties. The Parties also filed a Joint Request that the Agreements be treated as business confidential information and be kept separate from the file of U.S. Patent No. 8,812,454. Joint Request 1. After reviewing the Agreements, we find that the Agreements contain confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Agreements as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2021-00889 Patent 8,812,454 B2 3 This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion is granted, and the proceeding is terminated; FURTHER ORDERED that the Joint Request is granted, and the Agreements shall be kept separate from the files of U.S. Patent No. 8,812,454 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). IPR2021-00889 Patent 8,812,454 B2 4 PETITIONER: James M. Heintz DLA PIPER LLP (US) jim.heintz@dlapiper.com PATENT OWNER: Reza Mirzaie C. Jay Chung RUSS AUGUST & KABAT rmirzaie@raklaw.com jchung@raklaw.com