Proven Networks, LLC

Patent Trials and Appeals BoardAug 10, 2021

IPR2021-00196 (P.T.A.B. Aug. 10, 2021)

Trials@uspto.gov Paper No. 16 571.272.7822 Entered: August 10, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ VMWARE, INC. and DELL TECHNOLGIES INC., Petitioner, v. PROVEN NETWORKS, LLC, Patent Owner. ____________ IPR2021-00196 Patent 7,450,507 B2 ____________ Before TREVOR M. JEFFERSON, JOHN A. HUDALLA, and SCOTT E. BAIN, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-00196 Patent 7,450,507 B2 2 On August 4, 2021, with the Board’s authorization, VMware, Inc. and Dell Technologies Inc. (collectively “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 14 (“Joint Motion”). In support of the Joint Motion, the Parties filed copies of: an Agreement between VMware, Inc. and Proven Networks, LLC (Ex. 1018, “VMware Agreement”); an Agreement between Dell Technologies and Proven Networks LLC (Ex. 1019, “Dell Agreement”); and a Schedule 1, Exhibit B to Agreement (Ex. 1020, “Exhibit B”) (collectively referred to as “Agreements”). In further support of the Joint Motion, the Parties also filed a Joint Request to Treat the Agreements as Business Confidential and to Keep Separate. Paper 15 (“Joint Request”). Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter partes review, the Office may terminate the review. 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 2–3. The Parties further represent the dispute involving U.S. Patent 7,450,507 has been resolved. Id at 2. We instituted a trial on the above-identified proceeding on May 21, 2021. Paper 11. We have not yet decided the merits of the proceeding, and a final written decision has not been entered. Even though the proceeding has moved beyond the preliminary stage, the Parties have shown adequately IPR2021-00196 Patent 7,450,507 B2 3 that the termination of the proceeding is appropriate. Under these circumstances, 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. 7,450,507. Joint Request 2. 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). The Parties further request “[i]n the event that a third party submits a written request to the Board for a copy of either of the Agreements along with a purported showing of good cause, due to the highly sensitive nature of the Agreements, the Parties would like to be notified of such request and be given the opportunity to respond thereto.” Joint Request 2. We have no such procedure to serve upon the Parties a request for access to the Agreements, and, further, our regulations do not require us to do so. Therefore, we decline to issue an order regarding requests to access the Agreements. 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 IPR2021-00196 is terminated with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that the Joint Request is granted, and the IPR2021-00196 Patent 7,450,507 B2 4 Agreements shall be kept separate from the file of U.S. Patent 7,450,507, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2021-00196 Patent 7,450,507 B2 5 PETITIONER: Peter DiChiara Jason Kipnis Chetan Chandra Bin Li WILMER CUTLER PICKERING HALE & DORR LLP peter.dichiara@wilmerhale.com jason.kipnis@wilmerhale.com chetan.chandra@wilmerhale.com bin.li@wilmerhale.com PATENT OWNER: Kent Shum Neil Rubin Reza Mirzaie RUSS AUGUST & KABAT kshum@raklaw.com nrubin@raklaw.com rmirzaie@raklaw.com