Intel Corporationv.Zettaset, Inc.

Patent Trials and Appeals Board

Oct 9, 2014

13317803 - (D) (P.T.A.B. Oct. 9, 2014)

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