AGIS Software Development LLC

Patent Trials and Appeals Board

Oct 7, 2021

IPR2021-01357 (P.T.A.B. Oct. 7, 2021)

Trials@uspto.gov Paper 9
571.272.7822 Entered: October 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WHATSAPP LLC,
Petitioner,
v.
AGIS SOFTWARE DEVELOPMENT LLC,
Patent Owner.
____________

IPR2021-01177 (Patent 7,031,728 B2)
IPR2021-01178 (Patent 7,630,724 B2)
IPR2021-01327 (Patent 9,467,838 B2)
IPR2021-01357 (Patent 9,749,829 B2)
IPR2021-01482 (Patent 9,445,251 B2)
____________

Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
FREDERICK C. LANEY, Administrative Patent Judges.

Per Curiam.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2021-01177 (Patent 7,031,728 B2)
IPR2021-01178 (Patent 7,630,724 B2)
IPR2021-01327 (Patent 9,467,838 B2)
IPR2021-01357 (Patent 9,749,829 B2)
IPR2021-01482 (Patent 9,445,251 B2)

2
In each of the above-captioned proceedings, Petitioner and Patent Owner
(collectively “the Parties”) filed a joint motion to terminate. Paper 6 (“Joint
Motion”).1 In support of the Joint Motion, the Parties filed a copy of a written
confidential settlement agreement. Ex. 1033 (“Settlement Agreement”). The
Parties also filed a joint request to keep the Settlement Agreement separate and
confidential. Paper 7 (“Joint Request”). We authorized the filing of these papers
in an e-mail sent on October 4, 2021.
In the Joint Motion, the Parties state that termination of the proceeding is
appropriate because they have settled their disputes regarding the patents involved
in each of these proceedings. Joint Motion 1. With respect to the Settlement
Agreement, the parties “certify that there are no other agreements, oral or written,
between the parties made in connection with, or in contemplation of, the
termination of the proceeding.” Joint Motion 2.
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). These proceedings are in the preliminary phase, and we have not
yet decided whether to institute trials in the proceedings. In view of the early stage
of the proceedings and the settlement between the Parties, we determine that it is
appropriate to dismiss the petitions and terminate the proceedings, without
rendering decisions on institution or final written decisions.

1 We refer to papers and evidence filed in IPR2021-01177. The parties filed the
Settlement Agreement and similar motions in the other cases to which this Order
pertains.
IPR2021-01177 (Patent 7,031,728 B2)
IPR2021-01178 (Patent 7,630,724 B2)
IPR2021-01327 (Patent 9,467,838 B2)
IPR2021-01357 (Patent 9,749,829 B2)
IPR2021-01482 (Patent 9,445,251 B2)

3
In the Joint Request, the Parties jointly request to have the Settlement
Agreement be treated as business confidential information and be kept separate
from the files of the patents involved in these proceedings. 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 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
proceedings.
This Order does not constitute a final written decision pursuant to 35 U.S.C.
§ 318(a).
Accordingly, it is:
ORDERED that the Joint Motions are granted;
FURTHER ORDERED that the petitions in the above-captioned
proceedings are dismissed and the proceedings are terminated; and
FURTHER ORDERED that the Settlement Agreement shall remain
designated as “Parties and Board Only” in the Board’s filing system, shall be 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 patents and associated proceedings, pursuant to 37 C.F.R. § 42.74(c).
IPR2021-01177 (Patent 7,031,728 B2)
IPR2021-01178 (Patent 7,630,724 B2)
IPR2021-01327 (Patent 9,467,838 B2)
IPR2021-01357 (Patent 9,749,829 B2)
IPR2021-01482 (Patent 9,445,251 B2)

4
For PETITIONER:

Lisa Nguyen
Richard Frenkel
Jonathan Strang
Alan Billharz
Tiffany Weston
LATHAM & WATKINS LLP
lisa.nguyen@lw.com
rick.frenkel@lw.com
jonathan.strang@lw.com
alan.billharz@lw.com
tiffany.weston@lw.com

For PATENT OWNER:

Vincent Rubino
Peter Lambrianakos
Enrique Iturralde
FABRICANT LLP
vrubino@fabricantllp.com
plambrianakos@fabricantllp.com
eiturralde@fabricantllp.com