Sound View Innovations, LLC

Patent Trials and Appeals BoardNov 24, 2020

IPR2020-00924 (P.T.A.B. Nov. 24, 2020)

Trials@uspto.gov Paper 11 571-272-7822 Date: November 24, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CIGNA CORPORATION and CIGNA HEALTH AND LIFE INSURANCE COMPANY, Petitioner, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner. IPR2020-00924 Patent 6,725,456 B1 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and JOHN A. HUDALLA, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00924 Patent 6,725,456 B1 2 I. INTRODUCTION With the Board’s authorization, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint Motion to Terminate (Paper 9 (“Joint Motion”)). In support of the Joint Motion, the Parties filed a copy of a written confidential settlement agreement (Ex. 2026 (“Settlement Agreement”)). The Parties also filed a Joint Request to Treat Settlement Agreement as Business Confidential Information (Paper 10 ((“Joint Request”)). II. DISCUSSION In the Joint Motion, the Parties state that they have “resolved their disputes and now jointly move to terminate the proceeding” (Joint Motion 1). The Parties indicate an “agreement resolving the disputes between the Petitioner and Patent Owner,” Settlement Agreement (Ex. 2026), has been filed concurrently (Joint Motion 1). The Parties assert “termination is proper” because:  The Board has not yet “decided the merits of the proceeding before the request for termination is filed[]” . . .  All Parties are jointly requesting termination . . . [and]  The Parties have settled their disputes and agreed to voluntary dismissal of the pending related district court litigation [(Sound View Innovations, LLC v. Cigna Corp. et al., No. 1- 19-cv- 00964 (D. Del.))] between the Parties regarding the Patent-at- Issue (id. at 1–2). The Parties additionally state, “[t]he Settlement Agreement, Exhibit 2026, has been made in writing, and a true and correct copy [shall be filed with this Office]” (id. at 3). The Parties further “certify that, aside from IPR2020-00924 Patent 6,725,456 B1 3 the Settlement Agreement [ ], there are no other agreements, oral or written, between the Parties and made in connection with, or in contemplation of, the termination of this proceeding” (id.). 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 that the patent settlement agreement between the Parties (Exhibit 2026) submitted in this case concurrently herewith be treated as business confidential information and kept separate from the files of the involved patent and inter partes review 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 (Ex. 2026) 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 involved patents and associated proceeding. This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-00924 Patent 6,725,456 B1 4 III. ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that the above-captioned proceeding is terminated and the petition is dismissed; and FURTHER ORDERED that the Joint Request to Treat Settlement Agreement as Business Confidential Information is granted, and the Settlement Agreement 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). IPR2020-00924 Patent 6,725,456 B1 5 FOR PETITIONER: David B. Conrad Kenneth W. Darby Vikram Iyengar FISH & RICHARDSON P.C. conrad@fr.com kdarby@fr.com iyengar@fr.com FOR PATENT OWNER: Kenneth J. Weatherwax Bridget Smith Edward Hsieh Parham Hendifar Patrick Maloney Jason C. Linger LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com smith@lowensteinweatherwax.com hsieh@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com maloney@lowensteinweatherwax.com linger@lowensteinweatherwax.com