Intellectual Ventures I LLC

Patent Trials and Appeals Board

Jan 29, 2021

IPR2020-00470 (P.T.A.B. Jan. 29, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Entered: January 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

VMWARE, INC.,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

IPR2020-00470
Patent 7,949,752 B2
____________

Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
JOHN R. KENNY, Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Request to Treat Settlement Agreement as
Business Confidential Information
35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
IPR2020-00470
Patent 7,949,752 B2

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed an amended1 joint motion to terminate this
inter partes review. Paper 22 (“Joint Motion”). In support of the Joint
Motion, the Parties filed a copy of a written confidential settlement
agreement. Exs. 2021, 2022 (collectively, “Settlement Agreement”). The
Parties also filed an amended joint request to treat the Settlement Agreement
as business confidential information and to keep it separate from the files of
the challenged patent. Paper 23 (“Joint Request”).
II. DISCUSSION
In the Joint Motion, the Parties state that they have resolved their
disputes regarding the challenged patent, which include this proceeding and
the related district court litigation. Joint Motion 1. The Parties state that the
Settlement Agreement is “a true copy of any agreement or understanding . . .
between Petitioner and Patent Owner made in connection with, or in
contemplation of, the termination of the proceeding under 37 CFR
§ 42.74(b) with this joint motion.” Id. Accordingly, the Parties jointly
request termination of this proceeding. Id. at 2.

1 The Parties originally filed a joint motion (Paper 20) to withdraw the
Petition and a joint request (Paper 21) to treat the settlement agreement
(Ex. 2021) as business confidential information and to keep it separate from
the files of the challenged patent. Having reviewed the version of the
settlement agreement filed with those papers, we determined that it
references a “Schedule 1” and a “Schedule 2,” but it did not include those
schedules. On January 25, 2021, Judges McKone, Hudalla, and Hamann
held a teleconference with counsel for the parties to discuss the missing
schedules, in connection with related IPR2020-01081. The Parties
subsequently filed the amended papers (Papers 22, 23) and the missing
schedules (Ex. 2022).
IPR2020-00470
Patent 7,949,752 B2

3
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Consolidated Trial Practice Guide, 86 (Nov. 2019) (“Consolidated TPG”)2;
see 35 U.S.C. §317(a); 37 C.F.R. § 42.72. Here, although the Board has
instituted inter partes review of the challenged patent, the Board has not
decided the merits of the proceeding. Under these circumstances, therefore,
we determine that it is appropriate to terminate the proceeding as to the
Parties, without rendering a final written decision.
In the Joint Request, the Parties jointly request to treat the Settlement
Agreement as business confidential information and to have it be kept
separate from the files of the challenged patent and associated proceeding.
Joint Request 1. After reviewing the Settlement Agreement, we find that the
Settlement Agreement contains confidential business information regarding
the terms of settlement. We determine the Settlement Agreement
(Exs. 2021, 2022) shall be treated as business confidential information under
37 C.F.R. § 42.74(c) and shall be kept separate from the files of the
challenged patent and associated proceeding. See 35 U.S.C. § 317(b).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
Accordingly, it is:
ORDERED that the amended joint motion to terminate the inter
partes review (Paper 22) is granted, and the above-captioned proceeding is
hereby terminated; and

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00470
Patent 7,949,752 B2

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FURTHER ORDERED that the amended joint request to treat the
Settlement Agreement as business confidential information (Paper 23) is
granted, and the Settlement Agreement (Exs. 2021, 2022) shall remain
designated as “Parties and Board Only” in the Board’s filing system, shall
made available only to Federal Government agencies on written request, or
to any person on a showing of good cause, and shall be kept separate from
the files of the involved patent and associated proceeding, pursuant to
37 C.F.R. § 42.74(c).

IPR2020-00470
Patent 7,949,752 B2

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PETITIONER:

Katherine Vidal
Louis Campbell
Michael Tomasulo
WINSTON & STRAWN LLP
kvidal@winston.com
llcampbell@winston.com
mtomasulo@winston.com

PATENT OWNER:

Byron Pickard
Daniel Block
Lestin Kenton
James Hietala
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
bpickard-ptab@sternekessler.com
dblock-ptab@sternekessler.com
lkenton-ptab@sternekessler.com
jhietala@sternekessler.com

Russell Rigby
INTELLECTUAL VENTURES
rrigby@intven.com