MobileIron, Inc.

Patent Trials and Appeals Board

Mar 18, 2021

IPR2020-01594 (P.T.A.B. Mar. 18, 2021)

Trials@uspto.gov Paper No. 17
571-272-7822 Date: March 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY LIMITED,
Petitioner,

v.

MOBILEIRON, INC.,
Patent Owner.
____________

IPR2020-01593
IPR2020-01594
Patent 8,869,307 B2
____________

Before JENNIFER MEYER CHAGNON, JOHN D. HAMANN, and
JASON M. REPKO, Administrative Patent Judges.

REPKO, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2020-01593
IPR2020-01594
Patent 8,869,307 B2

2

I. INTRODUCTION
With the Board’s authorization, the parties filed Joint Motions to
terminate these proceedings. Paper 15 (“Mot.”).1 Along with the Joint
Motions, the parties filed a copy of a “Confidential Settlement Agreement”
they describe as “a true copy of settlement agreement entered between the
Parties” (Ex. 1025 (“Settlement Agreement”)2). Mot. 1. The parties also
filed Joint Requests to treat the Settlement Agreement as business
confidential information, and to maintain said agreement separate from the
public file under 37 C.F.R. § 42.74(c). Paper 16.
II. DISCUSSION
In the Joint Motions, the parties represent that the Settlement
Agreement “is the only agreement or understanding between Petitioner and
Patent Owner made in connection with, or in contemplation of terminating
this proceeding.” Mot. 2. The parties also represent the “settlement
agreement was entered into in contemplation of terminating this
proceeding.” Id. at 1–2.
These proceedings are still in the preliminary stage. We have not
entered decisions on whether to institute inter partes review in the
proceedings. In view of the early stage of the proceedings and the

1 Similar papers were filed in both IPR2020-01593 and -01594. Those
papers were assigned the same number in each proceeding.
2 The Settlement Agreement is between Blackberry Limited and Ivanti, Inc.
As noted in Patent Owner’s updated Mandatory Notices, filed on January 5,
2021, the “patent owner and real party-in-interest is MobileIron, Inc. Ivanti,
Inc. publicly announced that it has acquired Patent Owner.” Paper 11, 1.
IPR2020-01593
IPR2020-01594
Patent 8,869,307 B2

3

settlement between the parties, we determine that good cause exists to
terminate these proceedings with respect to the parties.
We also have reviewed the Settlement Agreement, and we determine
that the Settlement Agreement contains business confidential information
regarding the terms of the settlement, and that good cause exists to treat the
Settlement Agreement as business confidential information under 37 C.F.R.
§ 42.74(c).
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ Joint Requests (Paper 16) to treat the
Settlement Agreement (Exhibit 1025) as business confidential information
under 37 C.F.R. § 42.74(c) are granted, and the Settlement Agreement shall
be kept separate from the files of Patent 8,869,307 B2, and made available
only to Federal Government agencies on written request, or to any person on
a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c); and
FURTHER ORDERED that the parties’ Joint Motions to Terminate
(Paper 15) are granted, the Petitions in IPR2020-01594 and -01595 are
dismissed, and the proceedings are terminated.

IPR2020-01593
IPR2020-01594
Patent 8,869,307 B2

4

PETITIONER:
Michael Hawkins
Nicholas Stephens
Christopher Hoff
Andrew Dommer
FISH AND RICHARDSON P.C.
hawkins@fr.com
nstephens@fr.com
hoff@fr.com
dommer@fr.com

PATENT OWNER:
Parrish Freeman
Eric Maschoff
John Gadd
MASCHOFF BRENNAN
pfreeman@mabr.com
emaschoff@mabr.com
jgadd@mabr.com