Centrify Corporationv.Dell Software, Inc.

Patent Trial and Appeal Board

Jun 8, 2015

13563490 (P.T.A.B. Jun. 8, 2015)

Trials@uspto.gov Paper 14
571.272.7822 Entered: June 8, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CENTRIFY CORPORATION,
Petitioner,
v.
DELL SOFTWARE, INC.,
Patent Owner.

Case IPR2014-01538
U.S. Patent No. 8,533,744 B2

Before RICHARD E. RICE, BARBARA A. PARVIS, and
TINA E. HULSE, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION
Termination of the Proceeding
35 U.S.C. § 317 and 37 C.F.R. § 42.72

I. INTRODUCTION
A. Background
On June 5, 2015 Centrify Corporation (“Petitioner”) and Dell
Software, Inc. (“Patent Owner”) (collectively referred to as “the Parties”)
filed a joint motion to terminate this inter partes review involving U.S.
Patent No. 8,533,744 B2 (“the ’744 Patent”). Paper 12 (“Joint Motion to
Terminate”); see 35 U.S.C. § 317; 37 C.F.R. § 42.72. Authorization to file
IPR2014-01538
U.S. Patent No. 8,533,744 B2
2
the motion was given via e-mail correspondence from Board personnel on
May 22, 2015. Along with the Joint Motion to Terminate, the Parties filed a
true copy of their written settlement agreement (Ex. 2001), as well as a joint
request (Paper 13) to have their settlement agreement treated as confidential
business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The Parties state in their joint motion that they “jointly request
termination of inter partes review IPR2014-01538” because they “have
reached an agreement (the ‘Settlement Agreement’).” Paper 12, 1–2. The
Parties do not identify related proceedings involving the ’744 Patent. The
Parties, however, do identify proceedings relating to the grandparent of the
’744 Patent, which is U.S. Patent No. 7,617,501 B2 (“the ’501 Patent”) and
the parent of the ’744 Patent, which is U.S. Patent No. 8,245,242 B2 (“the
’242 Patent”).
In particular, the Parties identify, as related proceedings, a district
court case involving alleged infringement of the ’501 Patent, which is Quest
Software, Inc. v. Centrify Corp., No. 2:10-CV-00859-TS (C.D. Utah). Paper
12, 2. Additional related proceedings have been identified as follows:
(1) the ’501 Patent is the subject of two pending reexaminations: Inter
Partes Reexamination No. 95/001,458 and Ex Parte Reexamination No.
90/013,196 and (2) the ’242 Patent is the subject of Inter Partes
Reexamination No. 95/002,115. Pet. 1–2. The lawsuit against Petitioner has
been dismissed with prejudice. Paper 12, 2. Additionally, Petitioner has
withdrawn from an appeal of the inter partes reexamination. Id.; see also
Ex. 2003.
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
IPR2014-01538
U.S. Patent No. 8,533,744 B2
3
request of the petitioner and patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” The
requirement for terminating review with respect to Petitioner is met.
Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in
the inter partes review, the Office may terminate the review or proceed to a
final written decision under section 318(a).” Termination with respect to
Petitioner means that no petitioner remains in the proceeding. The Board,
therefore, has discretion to terminate this review with respect to Patent
Owner.
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability. 37
C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding
will terminate after the filing of a settlement agreement. See, e.g., Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
The panel also observes that briefing has not been completed in this
proceeding. To that end, Patent Owner has not filed a Patent Owner
Response, and, correspondingly, Petitioner has not filed a Reply.
Upon consideration of the circumstances of this case, the panel has
determined that termination of this inter partes review is appropriate as to
both Petitioner and Patent Owner without rendering a final written decision.
IPR2014-01538
U.S. Patent No. 8,533,744 B2
4
ORDER
For the reasons given, it is
ORDERED that, as was requested timely by the Parties (Paper 13),
the settlement agreement (Ex. 2001) will be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the joint motion to terminate IPR2014-
01538 (Paper 12) is granted and this proceeding is hereby terminated.

For PETITIONER:

Peter H. Kang
Ferenc Pazmandi
Sidley Austin LLP
pkang@sidley.com
fpazmandi@sidley.com

Eric S. Hyman
Blakely, Sokoloff, Taylor & Zafman, LLP
Eric.hyman@bstz.com

For PATENT OWNER:

Brenton R. Babcock
Ted M. Cannon
Knobbe, Martens, Olson & Bear, LLP
2brb@knobbe.com
2tmc@knobbe.com