Axure Software Solutions, Inc.v.iRise

Patent Trial and Appeal Board

Jun 22, 2015

10484541 (P.T.A.B. Jun. 22, 2015)

Trials@uspto.gov Paper 17
571-272-7822 Date Entered: June 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AXURE SOFTWARE SOLUTIONS, INC.,
Petitioner,

v.

iRISE, INC.,
Patent Owner.
____________

Cases IPR2015-00770 (Patent 7,861,158 B2)
IPR2015-00775 (Patent 7,861,158 B2)1
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
SCOTT A. DANIELS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

JUDGMENT
Termination Pursuant to Settlement
37 C.F.R. §§ 42.5, 42.71, 42.73, 42.74

1 This order addresses issues that are identical in the two cases. We exercise
discretion to issue one order to be filed in each of the two cases. The parties,
however, are not authorized to use this style heading.
IPR2015-00770 (Patent 7,861,158 B2)
IPR2015-00775 (Patent 7,861,158 B2)

2

On June 18, 2015, Petitioner Axure Software Solutions, Inc. and
Patent Owner iRISE, Inc. (“iRISE”) filed a joint motion to terminate the
respective case. Paper 15. Along with the motion, the parties filed a copy of
their settlement agreement, made in connection with the termination of the
respective case, in accordance with 37 C.F.R. § 42.74(b). Ex. 2002. The
parties also submitted a joint request that the settlement agreement be treated
as business confidential information and kept separate under 37 C.F.R.
§ 42.74(c). Paper 16. For the reasons set forth below, the joint motions to
terminate and the joint requests are granted.
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see 37 C.F.R. § 42.72. In their joint motions to terminate, the parties
indicate that the settlement agreement resolves all disputes between them
involving the patent-at-issue, U.S. Patent No. 7,861,158 B2 (“the ’158
patent”). See Paper 15 at 1. These cases are in their initial phase. iRISE has
not filed a preliminary response to the respective Petition. The Board has
not determined whether to institute inter partes review pursuant to 35 U.S.C.
§ 314. Upon consideration of the facts before us, we determine that it is
appropriate to terminate these cases and enter judgment, without rendering
either a decision to institute inter partes review or a final written decision.
See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. We, therefore, grant the
joint motions to terminate. Paper 15.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the settlement agreement
treated as business confidential information and kept separate from the files
IPR2015-00770 (Patent 7,861,158 B2)
IPR2015-00775 (Patent 7,861,158 B2)

3

of the ’158 patent. Thus, we grant the joint requests that the settlement
agreement be treated as business confidential information and kept separate
under 37 C.F.R. § 42.74(c). Paper 16.

For the foregoing reasons, it is:
ORDERED that the joint requests that the settlement agreement be
treated as business confidential information and kept separate under
37 C.F.R. § 42.74(c) (Paper 16) are granted; and
FURTHER ORDERED that the joint motions to terminate (Paper 15)
are granted and these cases are hereby terminated.
.

IPR2015-00770 (Patent 7,861,158 B2)
IPR2015-00775 (Patent 7,861,158 B2)

4

PETITIONER:

David W. O’Brien
Raghav Bajaj
David McCombs
HAYES AND BOONE, LLP
david.obrien.ipr@haynesboone.com
raghav.bajaj.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com

J. Jason Lang
WEIL, GOTSHAL & MANGES LLP
Jason.lang@weil.com

PATENT OWNER:

Ted M. Cannon
John W. Holcomb
Amy C. Chun
Brenton R. Babcock
KNOBBE, MARTENS, OLSON & BEAR, LLP
2tmc@knobbe.com
2jwh@knobbe.com
2acc@knobbe.com
2brd@knobbe.com