BCS Software, LLC

Patent Trials and Appeals Board

Mar 19, 2021

IPR2021-00197 (P.T.A.B. Mar. 19, 2021)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: March 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FACEBOOK, INC.,
Petitioner,

v.

BCS SOFTWARE, LLC,
Patent Owner.
_____________

IPR2021-00197
Patent 7,890,809 B2
____________

Before JUSTIN T. ARBES, JOHN P. PINKERTON, and
SHEILA F. MCSHANE, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-00197
Patent 7,890,809 B2

2
I. INTRODUCTION
On November 10, 2020, Facebook, Inc. (“Petitioner”) filed a Petition
for inter partes review of claims 1–9 of U.S. Patent No. 7,890,809 B2 (“the
’809 patent”) against BCS Software, LLC (“Patent Owner”). Paper 1. On
March 10, 2021, the parties filed a Joint Motion to Terminate Pursuant to
35 U.S.C. § 317 and 37 C.F.R. § 42.74 in which they jointly move to
terminate this proceeding in light of the settlement of their dispute regarding
the ’809 patent. Paper 4, 1 (“Joint Motion”). Concurrently, the parties also
filed a Joint Request to File Settlement Agreement as Business Confidential
Information Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
(Paper 5 (“Joint Request”)) and the Settlement Agreement (Ex. 1018). We
authorized the filing of the Joint Motion, the Joint Request, and the
Settlement Agreement in an email to counsel for the parties dated March 10,
2021.1
II. DISCUSSION
In the Joint Motion, the parties state they have entered into a written
settlement agreement, a true and correct copy of which is being filed as
Exhibit 1018, “that effectively resolves all disputes between the parties
regarding the challenged patent.” Joint Motion, 1. Thus, the parties state
that “termination is appropriate because all disputes between the parties
regarding [the ’809 patent] have been resolved.” Id. The parties also
“certify that there are no collateral agreements or understanding made in

1 Patent Owner filed mandatory notice information pursuant to 37 C.F.R.
§ 42.8. Paper 7. Thus, we understand the Joint Motion and Joint Request to
have been filed jointly by both parties.
IPR2021-00197
Patent 7,890,809 B2

3
connection with, or in contemplation of, the termination of this proceeding.”
Id. at 2.
This proceeding is in its preliminary stages, and we have not yet
decided whether to institute an inter partes review. Accordingly, we have
not “decided the merits of the proceeding” prior to the parties’ request for
termination. See 35 U.S.C. § 317(a). The foregoing factors weigh in favor
of granting the Joint Motion; and, we discern no factors weighing against
termination of the proceeding. Thus, we grant the Joint Motion.
With respect to the parties’ joint request to treat the Settlement
Agreement as business confidential information, and have it kept separate
from the file of the ’809 patent (see Joint Request, 1), we have reviewed the
Settlement Agreement and find that it contains confidential business
information of the parties regarding the terms of settlement. Thus, we
determine that good cause exists to treat the Settlement Agreement as
business confidential information kept separate from the file of the
’809 patent. Thus, we also grant the Joint Request.
III. CONCLUSION
For the foregoing reasons, we grant the parties’ Joint Motion to
terminate this proceeding and their Joint Request to keep the Settlement
Agreement confidential.
IV. ORDER
Accordingly, it is:
ORDERED that the Joint Motion to terminate is granted, and this
proceeding is hereby terminated; and,
FURTHER ORDERED that the Joint Request is granted, and the
Settlement Agreement (Exhibit 1018) shall be treated as business
IPR2021-00197
Patent 7,890,809 B2

4
confidential information and kept separate from the files of U.S. Patent
No. 7,890,809 B2, 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).

IPR2021-00197
Patent 7,890,809 B2

5
For PETITIONER:
John C. Alemanni
Wab Kadaba
Mansi Shah
Jonathan Lewis
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
wkadaba@kilpatricktownsend.com
mhshah@kilpatricktownsend.com
jvlewis@kilpatricktownsend.com

For PATENT OWNER:
René A. Vazquez
SINERGIA TECHNOLOGY LAW GROUP, PLLC
rvazquez@sinergialaw.com

M. Scott Fuller
GARTEISER HONEA PLLC
sfuller@ghiplaw.com