Intel Corporationv.Zettaset, Inc.Download PDFPatent Trial and Appeal BoardOct 9, 201413317803 (P.T.A.B. Oct. 9, 2014) Copy Citation Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: October 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INTEL CORPORATION, Petitioner, v. ZETTASET, INC., Patent Owner. Case IPR2014-00910 Patent 8,595,546 B2 Before MICHAEL W. KIM, BEVERLY M. BUNTING, and BRIAN P. MURPHY, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION Termination of the Proceeding 35 U.S.C. § 317(a) and 37 C.F.R. 42.72 Case IPR2014-00910 Patent 8,595,546 B2 2 On October 2, 2014, Intel Corporation and Zettaset, Inc. (collectively referred to as “the Parties”) filed a joint motion to terminate this inter partes proceeding involving Patent 8,595,546 (“the ’546 Patent”). Paper 8 (“Joint Motion to Terminate Proceeding”); see 35 U.S.C. § 317(b); 37 C.F.R. § 42.72. Authorization to file the motion was given in a communication between the Board and the Parties on September 25, 2014. Along with the Joint Motion to Terminate Proceeding, the Parties filed a copy of their written settlement agreement (Ex. 1022), as well as a joint request (Paper 9) to have their settlement agreement treated as business confidential 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 “have settled their dispute, and have reached agreement to terminate this inter partes review.” Paper 8, 1. 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. 48756, 48768 (Aug. 14, 2012). This proceeding is still in the preliminary stages 1 , as Patent Owner, Zettaset, Inc., did not file a Preliminary Response, and the Board has not issued yet a decision to institute an inter partes review. There are no collateral agreements referred to in the settlement agreement. See Ex. 1022 ¶¶ 3.4, 7.6. 1 A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether a trial will be instituted. 37 C.F.R. § 42.2. Case IPR2014-00910 Patent 8,595,546 B2 3 Under the circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering either a decision to institute or a final written decision. See 37 C.F.R. § 42.72. The Parties indicate that they have agreed to terminate this inter partes review without prejudice, and that Intel reserves the right to challenge the ’546 patent in a future inter partes review or other proceeding. Paper 8, 1. We note that 35 U.S.C. § 325(d) raises the question of whether the Board may exercise its discretion and deny any such future petition. In consideration of the foregoing, it is ORDERED that, as was timely requested by the parties, the settlement agreement (Ex. 1022) 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 this proceeding is GRANTED and this proceeding is hereby TERMINATED. Case IPR2014-00910 Patent 8,595,546 B2 4 For PETITIONER: David Krinsky Andrew Trask WILLIAMS & CONNOLLY LLP dkrinsky@wc.com atrask@wc.com For PATENT OWNER: Marek Alboszta marekalb@yahoo.com Copy with citationCopy as parenthetical citation