Guada Technologies LLC

Patent Trials and Appeals Board

Jul 7, 2020

IPR2020-00598 (P.T.A.B. Jul. 7, 2020)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Entered: July 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ORACLE CORP.,
Petitioner,

v.

GUADA TECHNOLOGIES LLC,
Patent Owner.
____________

IPR2020-00598
Patent 7,231,379 B2
____________

Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

ORDER
Granting Motion to Terminate
Granting Request to Keep Agreements Confidential
35 U.S.C. §§ 317, 318; 37 C.F.R. § 42.5(a), 42.74

IPR2020-00598
Patent 7,231,379 B2

2

On July 1, 2020, the parties filed a joint Motion to Terminate. Paper
11. The parties concurrently filed a joint request to treat the settlement
agreement and a related collateral agreement as business confidential
information, and for them to be kept separate from the patent file, pursuant
to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 12). The parties also
filed a copy of the written settlement agreement (Ex. 2001) and collateral
agreement (Ex. 2002). The parties represent that Exhibit 2001 is a true and
accurate copy of their settlement agreement and that Exhibit 2002 is the only
related collateral agreement. Paper 11.
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
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.” 35
U.S.C. § 317(b) requires that:
Any agreement or understanding between the patent owner and
a petitioner, including any collateral agreements referred to in
such agreement or understanding, made in connection with, or in
contemplation of, the termination of an inter partes review under
this section shall be in writing and a true copy of such agreement
or understanding shall be filed in the Office before the
termination of the inter partes review as between the parties.
Generally, the Board expects that a proceeding will terminate after the filing
of a settlement agreement, if the settlement agreement includes all parties to
the proceeding and the parties file all collateral agreements as required by
35 U.S.C. § 317(b), unless the Board has already decided the merits of the
proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,768 (Aug. 14, 2012). The parties filed such a settlement
agreement. Ex. 2001. The parties also filed a related collateral agreement
IPR2020-00598
Patent 7,231,379 B2

3

and represent that it is the only such related agreement. Ex. 2002, Paper 11.
Moreover, this proceeding is at a preliminary stage and no trial has been
instituted. Under these circumstances, we determine that it is appropriate to
terminate this proceeding.
After reviewing the parties’ settlement agreement and the collateral
agreement, we find that the settlement agreement and collateral agreement
each contain business confidential information and good cause exists to treat
the settlement agreement and collateral agreement as business confidential
information pursuant to 37 C.F.R. § 42.74(c).
Accordingly, it is
ORDERED that the Motion to terminate IPR2020-00598 (Paper 11)
as to both Petitioner and Patent Owner is granted;
FURTHER ORDERED that the joint request (Paper 12) to treat the
parties’ settlement agreement (Ex. 2001) and the collateral agreement
(Ex. 2002) as business confidential information under 37 C.F.R. § 42.74(c),
and for them to be kept separate from the patent file in the above-captioned
proceeding, is granted; and
FURTHER ORDERED that the Petition is dismissed under 37 C.F.R.
§ 42.71(a), and this proceeding is terminated with respect to both Petitioner
and Patent Owner.

IPR2020-00598
Patent 7,231,379 B2

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For PETITIONER:
James M. Heintz
Alireza Babaei
DLA PIPER LLP
jim.heintz@dlapiper.com
alireza.babaei@dlapiper.com

For PATENT OWNER:
Isaac Rabicoff
RABICOFF LAW
isaac@rabilaw.com