Proven Networks, LLC

Patent Trials and Appeals BoardAug 10, 2021

IPR2021-00596 (P.T.A.B. Aug. 10, 2021)

Trials@uspto.gov Paper No. 8 571.272.7822 Entered: August 10, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ PALO ALTO NETWORKS, INC., Petitioner, v. PROVEN NETWORKS, LLC, Patent Owner. ____________ IPR2021-00596 Patent 8,018,852 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 IPR2021-00596 Patent 8,018,852 B2 2 On July 21, 2021, with the Board’s authorization, Palo Alto Networks, Inc. (“Petitioner”) and Proven Networks, LLC (“Patent Owner”) (collectively referred to as “the Parties”) filed a Joint Motion to Withdraw the Petition filed in the above-identified proceeding. Paper 6 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a Settlement Agreement between Petitioner and Patent Owner. Ex. 1031 (“Settlement Agreement”). In further support of the Joint Motion, the Parties also filed a Joint Request that the Settlement Agreement be Treated as Business Confidential Information and Be Kept Separate Under 35 U.S.C. § 317(b). Paper 7 (“Joint Request”). In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek withdrawal of the Petition filed in this inter partes review proceeding, and that the filed copy of the Settlement Agreement is a true and complete copy. Joint Motion 2. The Parties further represent their disputes involving U.S. Patent 8,018,852, including both in this proceeding and in the related District Court litigations, have 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 Settlement Agreement be treated as business confidential information and be kept separate from the file of U.S. Patent No. 8,018,852. Joint Request 1. After reviewing the Settlement Agreement, we find that the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 IPR2021-00596 Patent 8,018,852 B2 3 C.F.R. § 42.74(c). The Parties further request “the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon the parties on the day the written request is provided to the Board.” Joint Request 1. We have no such procedure to serve upon the Parties a request for access to the Settlement Agreement, and, further, our regulations do not require us to do so. Therefore, we decline to issue an order regarding requests to access the Settlement Agreement. 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 to Withdraw Petition is granted, the Petition in IPR2021-00596 is dismissed, and the proceeding is terminated; FURTHER ORDERED that the Joint Request that the Settlement Agreement be Treated as Business Confidential Information is granted, and the Settlement Agreement shall be kept separate from the files of U.S. Patent No. 8,018,852 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). IPR2021-00596 Patent 8,018,852 B2 4 PETITIONER: Jonathan Tuminaro Michael D. Specht Daniel Block Todd Thurheimer STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C. jtuminar-PTAB@sternekessler.com mspecht-PTAB@sternekessler.com dblock-PTAB@sternekessler.com tthurheimer-PTAB@sternekessler.com PATENT OWNER: Reza Mirzaie C. Jay Chung RUSS AUGUST & KABAT rmirzaie@raklaw.com jchung@raklaw.com