Implicit, LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2020-00590 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Date: January 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JUNIPER NETWORKS, INC.,
Petitioner,
v.
IMPLICIT, LLC,
Patent Owner.

IPR2020-00585, IPR2020-00586, IPR2020-00587,
IPR2020-00590, IPR2020-00591, and IPR2020-005921

Before THOMAS L. GIANNETTI, BARBARA A. PARVIS,
SHEILA F. McSHANE, and NABEEL U. KHAN,
Administrative Patent Judges. 2

PARVIS, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.72

1 The parties may not use this caption for any subsequent papers without
prior Board authorization.
2 This is not an order from an expanded panel of the Board. Administrative
Patent Judges of each of the three-member panels from all the respective
proceedings are listed.
IPR2020-00585 (Patent 8,694,683 B2)
IPR2020-00586 (Patent 9,270,790 B2)
IPR2020-00587 (Patent 9,591,104 B2)
IPR2020-00590 (Patent 10,027,780 B2)
IPR2020-00591 (Patent 10,033,839 B2)
IPR2020-00592 (Patent 10,225,378 B2)

2
On January 15, 2021, pursuant to the Board’s authorization, Juniper
Networks, Inc. (“Petitioner”) and Implicit, LLC (“Patent Owner”) filed a
joint motion in each of the cases3 to terminate each of the instant inter partes
reviews pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. Paper 22
(“Joint Motion” or “Mot.”).4 The Joint Motion was accompanied by a true,
unredacted copy of a Settlement Agreement (Exhibit 2016). The parties also
request that the Settlement Agreement be treated as business confidential
information, to be kept separate from the patent file, pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Mot. 3.
In its Joint Motion, the parties jointly request termination of the
proceedings. Mot. 1. The parties state that they have settled their disputes
regarding the challenged patents and filed a stipulation of dismissal on
January 4, 2021 in the parallel litigation. Id. at 2. The parties state that
“[g]iven the early stages of this proceeding, the Parties submit it is
appropriate to terminate review under Section 317(a) and not proceed to a
final written decision.” Id. at 3.
The Board generally expects that “a proceeding will terminate after
the filing of a settlement agreement, unless the Board has already decided

3 The challenged patents in these proceedings are, respectively, U.S. Patent
Nos. 8,694,683 B2, 9,270,790 B2, 9,591,104 B2, 10,027,780 B2, 10,033,839
B2, and 10,225,378 B2.
4 For purposes of expediency, we cite to the Motion and Exhibits filed in
IPR2020-00585, unless otherwise indicated. The parties filed
similar Motions and Exhibits in IPR2020-00586, IPR2020-00587,
IPR2020-00590, IPR2020-00591, and IPR2020-00592.
IPR2020-00585 (Patent 8,694,683 B2)
IPR2020-00586 (Patent 9,270,790 B2)
IPR2020-00587 (Patent 9,591,104 B2)
IPR2020-00590 (Patent 10,027,780 B2)
IPR2020-00591 (Patent 10,033,839 B2)
IPR2020-00592 (Patent 10,225,378 B2)

3
the merits.” Consolidated Trial Practice Guide, 86 (Nov. 2019),
https://go.usa.gov/xpvPF; see also 35 U.S.C. § 327; 37 C.F.R. § 42.72.
Here, although the Board has instituted inter partes review of the challenged
patents, the Board has not decided the merits of the proceeding. Under these
circumstances, therefore, we determine that it is appropriate to terminate this
proceeding with respect to both Petitioner and Patent Owner. Accordingly,
we grant the parties’ Joint Motions to terminate.
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
of the challenged patents in these proceedings. Thus, we grant the parties’
request to treat the Settlement Agreement as business confidential.
Accordingly, it is
ORDERED that the Joint Motions to terminate the instant proceedings
are GRANTED;
FURTHER ORDERED that the joint request to treat the parties’
Settlement Agreement (IPR2020-00585, Exhibit 2016; IPR2020-00586,
Exhibit 2015; IPR2020-00587, Exhibit 2015; IPR2020-00590, Exhibit 2015;
IPR2020-00591, Exhibit 2015; IPR2020-00592, Exhibit 2015) as business
confidential information, to be kept separate from the patent file, is
GRANTED; and
FURTHER ORDERED that the instant proceedings are
TERMINATED.

IPR2020-00585 (Patent 8,694,683 B2)
IPR2020-00586 (Patent 9,270,790 B2)
IPR2020-00587 (Patent 9,591,104 B2)
IPR2020-00590 (Patent 10,027,780 B2)
IPR2020-00591 (Patent 10,033,839 B2)
IPR2020-00592 (Patent 10,225,378 B2)

4
FOR PETITIONER:
Jonathan Lindsay
David McPhie
Dennis J. Courtney
IRELL & MANELLA LLP
jlindsay@irell.com
dmcphie@irell.com
dcourtney@irell.com

FOR PATENT OWNER:
Christian Hurt
William E. Davis, III
DAVIS FIRM, PC
churt@davisfirm.com
bdavis@davisfirm.com