MobileIron, Inc.

Patent Trials and Appeals Board

Mar 18, 2021

IPR2020-01634 (P.T.A.B. Mar. 18, 2021)

Trials@uspto.gov Paper No. 14
571-272-7822 Entered: March 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY LIMITED,
Petitioner,

v.

MOBILEIRON, INC.,
Patent Owner.
____________

IPR2020-01634
Patent 10,038,598 B2
____________

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

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

IPR2020-01634
Patent 10,038,598 B2

I. INTRODUCTION
With the Board’s authorization, the parties filed a Joint Motion to
terminate this proceeding. Paper 12 (“Mot.”). Along with the Joint Motion,
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”)1). Mot. 1. The parties also
filed a Joint Request 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 13.
II. DISCUSSION
In the Joint Motion, 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. 1–2. The parties also represent the “settlement
agreement was entered into in contemplation of terminating this
proceeding.” Id.
This proceeding is still in its preliminary stages. We have not entered
a decision on whether to institute inter partes review in the proceeding. In
view of the early stage of this proceeding and the settlement between the
parties, we determine that good cause exists to terminate these proceedings
with respect to the parties.

1 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 8, 1.
IPR2020-01634
Patent 10,038,598 B2

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 Request (Paper 13) to treat the
Settlement Agreement (Exhibit 1025) as business confidential information
under 37 C.F.R. § 42.74(c) is granted, and the Settlement Agreement shall
be kept separate from the files of Patent 10,038,598 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 Motion to Terminate
(Paper 12) is granted, the Petition in IPR2020-01634 is dismissed, and the
proceeding is terminated.

IPR2020-01634
Patent 10,038,598 B2

PETITIONER:

Michael Hawkins
Nicholas Stephens
Christopher Hoff
Andrew Dommer
Patrick Bisenius
Terry Stalford
FISH AND RICHARDSON P.C.
hawkins@fr.com
nstephens@fr.com
hoff@fr.com
dommer@fr.com
bisenius@fr.com
stalford@fr.com

PATENT OWNER:

Parrish Freeman
Eric Maschoff
John Gadd
David Call
MASCHOFF BRENNAN
pfreeman@mabr.com
emaschoff@mabr.com
jgadd@mabr.com
dcall@mabr.com